Design Patents

Design patents protect the ornamental appearance of articles of manufacture: STATUTE — 35 U.S.C. § 171: 'Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor'; THREE REQUIREMENTS: (1) NEW: the design must be novel — not previously known or used (same novelty standard as utility patents: § 102); (2) ORIGINAL: created by the inventor (no copied designs); (3) ORNAMENTAL: the appearance must be primarily ornamental (not dictated by function); WHAT CAN BE PROTECTED: the VISUAL APPEARANCE of a product's exterior; the overall shape and form; surface ornamentation (patterns; textures; graphics on a product); portions of a product (claimed using solid/broken line drawings); ARTICLE OF MANUFACTURE REQUIREMENT: the design must be embodied in or applied to a specific article of manufacture; pure 2D designs applied to flat surfaces can qualify (a pattern on fabric; a UI icon); pure abstract designs with no product embodiment cannot qualify (trade secret or copyright law may protect those instead); FUNCTIONAL LIMITATION: if the visual appearance is dictated solely by the function (i.e., any alternative appearance would perform the function worse), the design may not be protectable by a design patent; courts use the availability of alternative designs as the primary test — if multiple different-looking designs could perform the same function equally well, the claimed design is ornamental; SINGLE CLAIM: a design patent has ONLY ONE claim: 'The ornamental design for [article of manufacture] as shown and described'; THE DRAWINGS ARE THE CLAIM: unlike utility patents with multiple written claims, the design patent's scope is entirely defined by the drawings; what is shown in SOLID lines = claimed; what is shown in BROKEN lines = unclaimed context (included to show the environment but not part of the claim); TERM: 15 years from grant (for applications filed after May 13, 2015); 14 years for earlier applications; NO MAINTENANCE FEES: design patents do not require maintenance fees (unlike utility patents at 3.5; 7.5; 11.5 years); PROSECUTION SPEED: design patents typically issue in 12-24 months — much faster than utility patents (2-4 years).

The ordinary observer test is the sole standard for design patent infringement: EGYPTIAN GODDESS v. SWISA (Fed. Cir. 2008 en banc): the Federal Circuit overruled the prior two-step test (which included a 'point of novelty' analysis) and adopted a SINGLE test for design patent infringement: the ORDINARY OBSERVER TEST; THE TEST: 'if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other' (based on Gorham Co. v. White, S.Ct. 1871); WHAT THE TEST REQUIRES: the ordinary observer is a person with ordinary skill in the relevant art who is familiar with the prior art; when comparing the patented design and the accused design, the observer considers them in light of the prior art; where prior art designs are closer to the patented design, small differences may distinguish; where the claimed design is far from prior art, even small similarities may create infringement; WHAT THE TEST DOES NOT REQUIRE: the test does not require proof that an actual customer was confused or deceived; it is an objective comparison (not a marketplace test); the test is not about identical designs — substantially similar designs can infringe; THE APPLE v. SAMSUNG CASES: Apple's design patents on the iPhone (rounded rectangle form factor; icon grid layout; bezel) were found infringed by Samsung Android phones; the Apple v. Samsung litigation produced over $1 billion in damages at the district court level (reduced on appeal); the Supreme Court's 2016 decision in Samsung v. Apple addressed the damages calculation (see next question); COMPARISON METHODOLOGY: compare all views shown in the patent drawings with all views of the accused product; consider the design as a whole (gestalt); do not dissect into elements; the trier of fact (jury) makes the ultimate determination.

Design patent damages include a unique 'total profits' remedy not available for utility patents: TWO DAMAGES ROUTES: (1) UTILITY PATENT-STYLE DAMAGES: like utility patents, design patent owners can recover lost profits or a reasonable royalty under 35 U.S.C. § 284; (2) TOTAL PROFITS — THE DESIGN PATENT ADVANTAGE: 35 U.S.C. § 289: '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'; THE § 289 'TOTAL PROFITS' REMEDY: unlike utility patent damages (which require apportionment to the patented feature's contribution), § 289 allows recovery of the TOTAL PROFIT from selling articles to which the design was applied; no apportionment to the design's contribution to product value is required; this can result in dramatically larger damages awards than utility patent cases; THE APPLE v. SAMSUNG SUPREME COURT DECISION (2016): Samsung Electronics Co. v. Apple Inc. (S.Ct. 2016): the Court unanimously held that the 'article of manufacture' for purposes of § 289 damages is not necessarily the end product sold to consumers; the relevant 'article of manufacture' may be a COMPONENT of the product (e.g., the screen assembly; not the entire smartphone); the Court sent the case back for lower courts to determine how to identify the relevant 'article of manufacture'; ON REMAND SIGNIFICANCE: the Apple v. Samsung remand means that 'total profits' can still be substantial but may not equal total product revenue; the relevant component must be identified; this limits § 289 damages in some product cases; ELECTION OF REMEDY: a design patent owner can elect EITHER § 284 damages (reasonable royalty; lost profits) OR § 289 total profits — whichever is greater.

Design patents and trade dress are complementary but different forms of protection: TRADE DRESS OVERVIEW: trade dress is a form of trademark protection for the distinctive visual appearance of a product or packaging; protects product appearance that identifies the source of goods to consumers; SIMILARITIES BETWEEN DESIGN PATENT AND TRADE DRESS: both protect the appearance of a product; both can cover product shape; color combinations; overall visual impression; CRITICAL DIFFERENCES: ORIGIN: design patent = federal patent grant (limited-term); trade dress = trademark right that can last indefinitely (as long as the mark is used in commerce and remains distinctive); TERM: design patent = 15 years then public domain; trade dress = potentially indefinite (renewed every 10 years; as long as use continues and distinctiveness maintained); PROTECTION START: design patent = from grant date (provisional protection from publication); trade dress = from first use in commerce; ACQUIRES DISTINCTIVENESS: trade dress typically must achieve SECONDARY MEANING (consumers associate the appearance with a specific source); design patents do NOT require secondary meaning; FUNCTIONALITY DEFENSE: trade dress CANNOT protect functional features; design patents also exclude purely functional features; both are subject to the functionality doctrine; ENFORCEMENT: design patent = patent infringement suit (no confusion required; ordinary observer test); trade dress = trademark infringement suit (likelihood of confusion required; marketplace test); COPYING vs. CONFUSION: design patent infringement does NOT require market confusion; trade dress infringement DOES require a likelihood of consumer confusion as to source; REGISTRATION: design patent = registered at USPTO (requires prosecution); trade dress = can be registered at USPTO (Section 2(f) registration; requires proof of secondary meaning) OR unregistered (common law trade dress); STRATEGIC COMBINATION: the strongest protection combines BOTH: design patent for immediate, per se protection during the product life cycle; trade dress application built up over time for indefinite post-patent protection; Apple has used both for its iPhone designs; FIRST TO FILE: design patents must be filed before the 1-year grace period for your own disclosure; trade dress does not have a filing deadline; PROSECUTION DIFFERENCES: design patent — relatively simple prosecution (12-24 months); trade dress — more complex registration process (proving secondary meaning); or litigate as unregistered trade dress (riskier).

The Hague Agreement provides a streamlined route for international design patent protection: THE HAGUE AGREEMENT (HAGUE SYSTEM): administered by WIPO; allows a single international design application filed at WIPO to cover multiple countries; analogous to the PCT system for utility patents but specifically for industrial designs; US joined the Hague Agreement effective May 13, 2015; COUNTRIES COVERED: as of 2024, Hague Agreement covers 90+ countries including all EU member states (via EUIPO); Japan; South Korea; China (not yet as of 2024 — China has a national design patent system); the US; UAE; Mexico; FILING PROCESS: file a single international design application (Form DM/1) at WIPO; designate the member countries you want protection in; pay a single set of fees; WIPO publishes the design and transmits to designated offices; each designated office then examines under its own national law; FEES: publication fee + designation fees for each country; typically significantly cheaper than filing individually in each country; EU-WIDE PROTECTION: a single RCD (Registered Community Design) through EUIPO covers all 27 EU member states; unregistered Community Design provides 3 years of protection from first disclosure without registration; this is often the most cost-effective design protection strategy for EU markets; CHINA: China does not participate in the Hague Agreement; to get design patent protection in China, must file directly with CNIPA; China design patent term is 15 years from filing date; China is the world's largest filer of design patents — important market to protect; PROSECUTION: international designs receive a 6-month pendency before publication; after publication, designated offices have 6-12 months to refuse (depending on country); if no refusal within the deadline, the design is protected in that country for the term of the Hague registration (life of the design); TERM: Hague registrations are valid for 5 years and renewable in 5-year increments up to the national maximum (15-25 years depending on country); STRATEGY: file internationally via Hague for major markets; file directly in China; consider unregistered EU design for fast-to-market situations.