Everyone remembers Apple being awarded $1 billion in damages against Samsung for copying the design of Apple’s iPhone. The award was the product of Apple obtaining a patent on a smart phone design, particularly the curved corners of the smart phone frame. Samsung’s copying of a curved frame probably seemed a trivial detail to some. However Apple reportedly spend a great deal of time coming up with the design. Recall no one had made a smart cellular phone before. Remember the flip-phones and other cell phone design variations from the 1990’s? The increased interest in protecting product design features prompted by the Apple v. Samsung decision may change the $1 Billion stepchild status for design patents.
The award refocused attention on design patents, the poor stepchild of the US patent statutes. For background, there are three types of patents that can be awarded by the US Patent Office, utility patents, plant patents and design patents. Utility patents are probably what everyone thinks of regarding patents, i.e., novel products, devices or methods of doing something. Plant patents are exactly what the name implies. Design patents have sat in the background for decades and pertain to the ornamental appearance of items. Design patents comprise less that 9 % of all patent applications filed. As I have suggested, design patents have often been overlooked as a tool to protect intellectual property.
Design patents protect the ornamental appearance of an object. Undoubtably the unique grill of a BMV is subject of a design patent. In contrast the blue and white circular BMW logo or emblem is trademarked. Its iconic location of placement upon the vehicle front fender could be subject of a design patent. The scope of protection of design patents and trademarks is similar, i.e., if a competitor uses a design feature or mark that would likely cause confusion in the mind of a potential purchaser (trademark standard) or ordinary observer (design standard) of the origin of the product, then there is likely infringement.
In the case of infringement of a design patent, the applicable statute, 35 U.S.C. 289, states the patent owner is entitled to all the profits of the infringing party. That may seem illogical when the infringed feature is merely the curved corner on an iPhone frame. The iPhone is a complex device undoubtably subject of multiple patented features. The frame is merely a component of the overall device.
The Supreme Court agreed with that thought and has reduced the original award. The issue of entitlement to all profits is up in the air. The Supreme Court suggested a complex and perhaps confusing/ambiguous 4 part test be used. This suggestion was intended to change the clear statement of the statute. It was intended to justify reducing the $1 Billion award.
This 4 part test looks at the article of manufacture subject of the design patent (which will likely be subpart of the whole product). Factors reviewed are:
The scope of the design. This is essentially the drawings of the patent.
Prominence of the design in relation to the entire product.
Is the design conceptually distinct for the product.
Physical relationship between the design and the product.
In the case of the iPhone, I would argue that the design of the frame is integral to the entire phone and therefore has an inseparable relationship with the product. It defines its appearance, i.e., it is prominent, and therefore cannot be distinct from the product. With this analysis, the design of the iPhone frame is not trivial and the $1 Billion award may be justified.
Regardless, attention has been refocused upon the desirability of patenting the “ornamental” features of a product or object sold in the market. Part of the attractiveness of design patents is the relative ease in obtaining a patent for a product design. The cost may be less than $2,000 and take less than 18 months. This is substantially less than the cost and time required to obtain a utility patent. Also there is greater certainty is being awarded a patent protection.
The principal feature of an application for design patent protection is the drawings of the application. The object or features depicted in the drawing define the patented design. The object must typically be shown from the front, back, sides, top and bottom.
It must be remembered, however, that the design must be novel and cannot be an obvious variation of existing designs. Also the specifics of the design cannot be mandated by the functional requirements of the product.
Inventors and entrepreneurs should consider whether the shape or packaging elements of their product merit design patent protection. Just as their product name may be unique and valuable (thereby deserving trademark protection), the appearance of their product may distinguish the product, achieving market “good will” i.e., consumer identification. Further, the number of applications for design patents has increased in recent years.
© David McEwing 2020