Why It Is Important to Consider Design Patents

By Barry R. Lewin

A design patent protects merely the ornamental appearance of an article.

“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.“ 35 U.S.C. 171.

Design patents are often used relative to articles of clothing, accessories, and other uniquely-appearing articles. In more recent times, design patents are more frequently being used for protecting high-technology articles, such as mobile computing devices.

Unlike utility patents, where one found to infringe the patent is liable for damage “adequate to compensate for the infringement but in no event less than a reasonable royalty…” 35 U.S.C. 284, a different and more comprehensive statute applies to design patents.

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied, shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. 35 U.S.C. 289

That is, in the event of a determined design infringement, the infringer is liable for the entirety of his/her total profits, not the typically percentage-amount available for utility patent infringement.

In the on-going battle, Apple sued Samsung over infringement of both utility and design patents. Samsung was found to infringe some Apple design patents (in addition to some claims of utility patents), and Apple was awarded the entirety of Samsung’s profits from the infringing device(s) based on design patent infringement. “Section 289 explicitly authorizes the award of total profit from the article of manufacture bearing the patented design.” Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983 (Fed. Cir. 2015).

The issue of “entirety of total profits” is now at the U.S. Supreme Court.

As design patents are being applied to very sophisticated and proliferating products, such as mobile phones, the current law demonstrates that design patents can be an even more powerful tool than utility patents in damage recovery. Although the law may be antiquated, it remains a good law with respect to valid patents.

Consequently, those developing products that might be quite ripe for utility patent protection should concurrently consider applying for design patent protection.