While design patents have been around as long as utility patents, they have long been neglected as a source of potential value. But that is changing.
In a shifting tide that began five years ago, courts have begun favoring the plaintiff in design patent lawsuits by simplifying the standard for proving infringement on the ornamental features of a product.
The impact of the court’s shift in the infringement analysis was evident in December 2013, when a jury in San Jose, California, awarded $290 million to Apple Inc. The jurors heavily tilted toward the iPhone maker in its claims for damages against Samsung Electronics Co. Ltd., which had earlier been found to infringe on iPhone design features, such as using fingers to pinch and zoom on the screen.
Apple’s victory was hard won. The latest award was connected to a lawsuit that began two years earlier and had resulted in damages of $1 billion. That was reduced to nearly $640 million, with the remaining amount being litigated a second time.
If it has a unique appearance think design patent. This is the iPhone graphical user interface, US Design Patent No. D687,842.
Although the first Patent Act was enacted in 1790, it was not until some 52 years later that the US patent laws were modified to allow for the patenting of ornamental designs. In 1842 a statute was passed to provide for, among other things, the grant of patents for any new and original: (1) design for a manufacture; (2) design for printing on fabrics; (3) bust or statue; (4) impression to be place on an article of manufacture; or (5) shape or configuration of any article of manufacture. Subsequently, in 1902, the design patent statute was amended to define the allowable subject matter simply as “any new, original, and ornamental design for an article of manufacture.’’ This language mimicked the 1887 modifications to the Patent Act relative to infringement, and still closely represents the current law regarding patentability of designs.
The first design patent that was issued in the United States was issued to George Bruce on November 9, 1842. Only thirteen design patents were issued in the first year of eligibility.
So how many drawings were present in the first design patent issued? OK, this is a trick question. The surprising answer is that there were no drawings at all, which is at least a little bizarre based on practice today. But Mr. Bruce’s design patent covered a new typeface, which could be, and was, described in words rather than by claiming the ornamental design as shown, which would be what you would do today.
In this series, we are looking at how to create strong design patents and to use them to protect your business. In the first three articles, we looked at The Power of the Broken Line to protect the shape of your product, The Power of Color to protect your graphical images, and The Power of Portfolio to build a wall of protection around your product. In this article we are looking at the “The Power of Policing Trademarks and Design Patents”.
“Policing” means actively searching for people copying your product and enforcing both your trademarks and design patents against them. Patents and trademarks don’t stop copying. If you are successful, you will be copied. They do allow you, however, to shut down counterfeiters fast. We’ve expanded the scope of our discussion to include trademarks since trademarks are your first line of defense to stop “on-line” counterfeiting. The on-line shopping sites like Amazon, eBay and Aliexpress respect them and will remove knock off listings. Design patents come into play when the counterfeiting gets serious and you need to stop bulk importers of knockoffs.
Our case study of how a small growing company can use trademarks in combination with design patents to effectively stop knockoffs will be Olloclip®, a very popular 3-in-1 iPhone camera lens attachment.
MacWorld Conference & Expo 2007, San Francisco. Steve Jobs presents Apple’s phone.
In this series, we are looking at Apple’s design patents and their strategies for using them to protect the iPhone from being copied. In the first two articles, we looked at The Power of The Broken Line, and The Power of Color. In this article we are looking at the The Power of Portfolio. In the patent industry, a “portfolio” is a grouping of patents that each protect different aspects of the same invention. Patents are like shingles on a roof, there needs to be some overlap between them to provide complete protection.
On January 9, 2007, Steve Jobs introduced the iPhone to the world. It was an historic event. He was immensely proud of what Apple had accomplished and he made it clear he was going to defend it. Steve was passionate about both style and technology, so when he said “Boy have we patented it” he meant both design and utility patents. We are focusing on design.
In the past decade, design patent filings and grants have experienced continuous growth. The 2013 IP Record confirms that design patent filings and grants are still on the rise—658 more design patents were filed in 2012 than in 2011—and the data suggests that the trajectory of design patent applications is going nowhere but up.
Design patents are essential in protecting the ornamental design of consumer products and their components; the intense litigation of the Apple v. Samsung lawsuits stressed the importance of design protection. The significance of design patents to the Apple v. Samsung lawsuitappears to have affected other companies’ patent strategies as well. The fifty companies on the IP Record’s list of the top 50 U.S. design patent grantees for 2012 were collectively granted greater than 150 more patents than the top 50 companies of 2011. Samsung, the top design patent recipient in both 2011 and 2012, alone accounts for almost a third of this growth—it was granted 378 design patents in 2012, exactly 50 more than in 2011. Apple, the #7 patent owner in 2011, rose one spot in 2012 and acquired 25 more patents than its total in its previous year.
Editor’s note: This is the second in a four part series on Strong Design Patents. In this series, author Mark Nowotarski looks at Apple design patents and the strategies behind building a strong design patent portfolio. Part 1 was The Power of the Broken Line. Subsequent articles will discuss “The Power of the Portfolio” followed by “The Power of Policing.”
Color matters. For example, the success of Apple Computer’s recent lawsuit against Samsung was largely due to Apple’s design patent on a single color image of their iPhone graphical user interface (GUI). This design patent accounted for $725 million of the $1 billion jury verdict on damages. There were many differences between Samsung’s Galaxy phone GUI and Apple’s patented GUI, but the overall color schemes were sufficiently similar to convince the jury that there was a likelihood of confusion between the Samsung GUI and the Apple patented GUI. Hence Samsung infringed the design patent, and Apple was entitled to all of the profits Samsung made from the confusingly similar phones.
You can patent the look and feel of a graphical user interface. More precisely, you can patent an electronic device that displays a graphical user interface of a certain design by filing an image of the GUI with the USPTO as a “design patent.” If the overall design is new and not obvious, the design patent will be allowed and is valid for 14 years from the issue date. For the next 14 years, no one will be able to make, use or sell an electronic device in the US that displays a graphical user interface that is confusingly similar to yours. It doesn’t matter what the device is.
Design matters. For example, the success of Apple Computer’s products is due not only to their technical capabilities, but also to their aesthetic design, which Apple has justifiably protected with a substantial portfolio of design patents. Recently, Apple’s iPhone design patents and other intellectual property were under scrutiny in comparison with the Samsung Galaxy family of phones. However, because of the strategy Apple utilized when filing these patents, their counsel at trial was able to obtain a jury award of over $1 billion, $980 million of which could be attributed to infringement of the design patents[i].
In this four part series, titled Strong Design Patents, we will look at Apple’s design patents to see how to build a strong design patent portfolio. In this first article, we will look at “The Power of The Broken Line,” then “The Power of Color”, followed by “The Power of the Portfolio”, and lastly, “The Power of Policing”.
Design patents are deceptively simple. They are merely drawings or photographs of an object. They protect against someone else making a similar looking object. Infringement is determined by comparing the accused object against the figures in the patent. If the accused object is sufficiently similar to the figures so that a typical observer using normal care would confuse the two, then the accused object infringes the patent. The damages for infringement are either the lost profits of the patent holder, a reasonable royalty the patent owner would have received for a license to the patent or all of the profits the infringer made by selling the infringing devices, whichever is greater. It doesn’t matter how much of the value of the accused object can be attributed to the design. If the accused object infringes, the patent owner is entitled to the full damages.
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