Jeffrey Stone and Brett Klein, Patent Attorneys, Winthrop & Weinstine, P.A.

The design patent is perceived by many designers and patent attorneys as being a relatively weak and impotent patent protection mechanism as compared with the better-respected utility patent. It is typically thought that design patents are only useful in protecting against exact copies. The reasoning behind this attitude is one or more of the following very commonly held misconceptions:

1. Design patents are generally perceived as easy to get around. Why bother if small changes are all that is required to avoid my patent.

2. You generally get what you pay for, and design patents are cheap, so I’m probably not getting a lot.

3. In the end, design patents are just a fast (and don’t forget “cheap” and “probably ineffective unless the accused product is an exact copy”) way to gain the rights to mark a product with a patent number.

As a result of these misconceptions, the design patent is generally an under-appreciated, misunderstood and under-utilized tool in both protection and enforcement of patent rights. Until this summer, with the Apple-Samsung case that thrust it into the spotlight, the design patent has been generally quiet, humble, and meek. However, the design patent has always had some very potent elements built into its protection and enforcement mechanisms and more recently, some additional power has been gained through court decisions (See e.g., Egyptian Goddess, Inc. v. SWISA, Inc., 543 F.3d 665 (Fed. Cir. 2008) (doing away with the point of novelty test and not adopting the non-trivial advance test))  loosening the test for finding infringement of the design patent. Apple’s heavy reliance on its design patents serves as one example of this power and the magnitude of the damages award in the Apple-Samsung case moves the design patent into its rightful place in the spotlight.

For now, it is enough to refer design patent skeptics to the verdict and damages award in the Apple-Samsung case to understand, accept and implement the power of design patents. While the case itself has not rewritten any design patent laws, it is significant due to Apple’s heavy reliance on design patents to show Samsung’s infringement.

The relevant numbers at a glance:

• Apple’s damages claims were a total of approximately $2.5 billion, with about 80% or $2 billion owing to its design patents.

• The products at issue were also covered by more than 200 utility patents.

• The verdict resulted in $1.05 billion owed to Apple by Samsung, primarily due to design patent infringement. This is one of the largest damages awards ever issued in a patent infringement case.

Apple’s success with its design patent protection as both a stand-alone protective mechanism as well as a very effective supplemental protection to that provided by its utility patents should convince the skeptics that the design patent is, indeed, a highly powerful and effective protective and enforcement mechanism.

The Apple-Samsung case did not occur by chance. In fact, it appears that both parties had begun to recognize the value of design patents. In the years leading up to the case, the number of design patents issued to both parties from 2001 to 2011. Samsung’s numbers are greater than Apple’s numbers in this context largely because it has significantly more products to protect than Apple:

Perhaps significantly, Apple received design patent D650,133 on November 13, 2012, for the now-familiar page turning design implemented on various devices. This patent does not include the underlying technology required to implement the page turning device, but does cover the non-function aspects that are indicated in part below:

And, Apple and Samsung are not the only ones that have begun to appreciate the power of the design patent. The above data is an extreme example, but since 2001, applications for design patents have increased by 40%. The chart below illustrates the strong upslope in both filings and issuances design patents within the USPTO.

Data Source: U.S. Patent and Trademark Office Patent Technology Monitoring Team (PTMT)

This increase signals an enhanced recognition of, and reliance upon, the power of the design patent in IP protection strategies, which has been validated by the Apple-Samsung verdict and its resulting $1.05 billion damages award, based primarily on Apple’s design patent rights. In short, broad and robust design patents are powerful. Prudent companies should recognize the necessity of incorporating design patents into their patent protection and enforcement strategies.