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Design Patents Overlooked in Many IP Portfolios

September 27, 2018

Many consumer products companies have long taken advantage of the protection afforded through design patents. Companies in other areas — heavy industry, electronics and, most notably, medical devices — have been slower to recognize these valuable assets.

As a general guideline, utility patents protect the function of a device regardless of its appearance, while design patents protect the appearance of the device regardless of its function. Under design patent law, a design is generally viewed as ornamental if it is not purely functional. A jury earlier this year determined that Samsung owed Apple more than $500 million for infringing three design patents, but only about $5 million for infringing two utility patents. Although unusual, this case illustrates that design patents can be effective when used to cover ornamental features of technical products. It also demonstrates the importance of planning and preparing the design application with varied scope and targeted coverage.

As the design or appearance of any portion of a device evolves, companies should consider whether to file one or more design patent applications directed to each new iteration of the device. While a redesigned device may be functionally equivalent to the first device in the product line, the redesign may have an inventive ornamental appearance that can be protected by a newly filed design patent application. In this way, companies can extend patent protection of certain aspects or features of a product line beyond the conventional utility patent term.

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