Authored by Robert L. Burns, Weiguo (Will) Chen, and Elizabeth D. Ferrill
In the United States, a major new development is taking place with intellectual property. The design patent is becoming recognized as one of the best tools a company can use to stop a competitor from copying its product design. In a recent case, a jury awarded Apple $1.05 billion in damages against Samsung Electronics for infringement of Apple’s patents, including 3 design patents related to cell phones. This award represents, by far, the largest design patent damages award in United States history and ranks among the highest in U.S. patent infringement awards. What is surprising is the strength of design patents given the speed and relatively low expense in acquiring them.
A United States design patent covers the ornamental appearance of a product. Design patents can cover such items as the physical shape of a beverage bottle or a bicycle, or icons or user interfaces displayed on a cell phone. The possible range of products that a design patent can protect is quite varied. And for very little money, a company can obtain a design patent that prohibits competitors from importing into the United States similar products to the claimed design. Notably, any inventor of a novel design can apply for a design patent, including companies located in China.
No longer in the shadows, design patents have stepped into the spotlight. Although the United States has protected product design for more than one hundred and seventy years, design patent are now in greater use. Companies that invest in product design are now turning to design patents in increasingly larger numbers. Those design patent owners are enforcing their rights in ways not seen before. New design patent cases have cropped up involving everything from clothing, including Lululemon yoga pants and Spanx undergarments, to Oakley sunglasses and cupcake baking equipment.
Here is the Apple design patent story. In 2007, when the first generation Apple iPhone was announced, many consumers were still using their basic “flip” phones and even “power users” were limited to smartphones with either a physical keyboard or a stylus. In this context, the iPhone had an unusual design. It featured a handset dominated by a touchscreen and included only a few physical buttons. Further, it had a virtual keyboard and a home screen full of colorful icons representing various applications.
Not only did Apple have a new product design, it had a secret weapon, which the world would not even know about for some time. Just days before releasing the iPhone, Apple filed design patent applications with the U.S. Patent and Trademark Office containing hundreds of views of its new product and its user interface. While many of Apple’s patents did not issue until 2009 and more may be coming (pending design patent applications are not public in the United States), Apple clearly had the forethought to patent its new product early and comprehensively.
But Apple did not limit itself to only patenting the entire product design or user interface, also applying for patents focused on individual features as well, such as the front of the phone or specific icons. This type of focused claiming allowed Apple to have a full arsenal of design patents when it came time for enforcement.
Finally, Apple was not the only player in the smartphone revolution. By the time Apple filed suit against Samsung in 2012, Samsung alone had introduced 26 smartphones and two tablets, later accused of infringement. And, most importantly, by the time of verdict, Samsung had made a substantial profit from these products, making the potential damages quite high, justifying Apple’s lawsuit.
But, this strategy can be applied to protect many types of products in the U.S. market, especially when a company has a revolutionary product design and expects high growth in the related industry. The United States recognizes 35 classes of protectable products, including furniture, apparel and shoes, personal care items and cosmetics products, toys, games and sporting equipment, textiles (including paper goods), transportation and construction equipment, and medical equipment. Recently, the U.S. Patent and Trademark Office has issued design patents appearing to cover Google glasses, the next version of the Microsoft Kinect Xbox 360 video game system, and Stella McCartney’s Lucia dress. Likewise, many Chinese companies have been awarded design patents, such as, patents for a tablet computer and a vehicle assigned to BYD Company, Ltd, LED and speaker products assigned to Foxconn Technology Co., and communications equipment for the Huawei family of companies. Essentially, it may be valuable to protect any product with a unique or valuable appearance to be sold in the United States with a design patent protection.
To apply for a design patent in the United States, applicants must file a complete set of drawings or photographs depicting their design, along with a brief description. Unlike in China, in the United States, applicants may use certain drawing techniques involving shading, the use of color, and the representation of unclaimed elements with broken lines. Using these techniques, applicants in the United States have been able to claim only a unique portion of the total product design and to file more than one design patent application based on a single product design. For instance, two of the design patents in the Apple case claimed only the front face of the smartphone. Moreover, design patents can be obtained for as little as $5,000 and normally issue around 12-15 months after filing, or as little as six months under the expedited procedure. Once issued, U.S. design patents generally remain in force for 14 years.
For a few thousand U.S. dollars, a company can obtain powerful protection on its most important products in the form of a U.S. design patent.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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