Home > Design Patent > Design for the Win: Design Patent as a powerful Weapon in Intellectual Property Enforcement

Design for the Win: Design Patent as a powerful Weapon in Intellectual Property Enforcement

To many intellectual property practitioners and inventors, the design patent is the often forgotten sibling of the more glamorous utility patent.  Sometimes, companies overlook design patents as a viable intellectual property right protection for their products and technology.

In fact, some of the most iconic products are/were protected by design patents.  For example, the Coca-Cola bottle (U.S. Pat. No. D48,160, titled “Bottle or Similar Article”, issued Nov. 16, 1915), the Google homepage (U.S. Pat. No. D599,372, titled “Graphical User Interface for Display of a Communication Terminal”, issued Sept. 1, 2009).

Figure 1: Selected Figures from Design Patent D48,160 and Design Patent D599,372.

Given the late Steve Jobs’ passion for design it is also no surprise that many of Apple’s most famous products are subject to design patents.  For example, the iPod (U.S. Pat No. D469,109, titled “Media Player”, issued on Jan. 21, 2003; the iPhone, (U.S. Pat. No. D580,387 titled “Electronic device”, issued Nov. 11, 2008), the iPad, (U.S. Pat. No. D504,889, titled “Electronic Device” issued Mar. 10, 2005), the Apple power adapter (U.S. Pat. No. D478,310 titled “Power Adapter”, issued Aug. 12, 2003).

Figure 2: A Medley of Figures From Apple’s Design Patents. 

Perhaps because of Apple’s robust design patent portfolio and the resolve to protect its intellectual property rights, Apple has been able to effectively use its design rights to achieve a series of court victories over its rivals.

In fact, Apple’s victories demonstrate that when used effectively, design patents can be a powerful arsenal in a company’s IP portfolio, especially considering the relatively low cost and effort to procure them.

Design Patent 101

In the United States, the overall aesthetic appearances of objects may be protected through the patent system.  35 U.S.C. §171 articulates that “whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”i

As a part of the patent legal scheme, a design patent is subject to comparable requirements as utility patent such as novelty and non-obviousness although all with a design patent twist.  Additionally, design patent is subject to it is own unique requirements such as ornamentality. Overall, an applicant must meet five main requirements to obtain a design patent: the subject matter must be an article of manufacture, original, novel, non-obvious, and ornamental. It is also important to note that unlike a utility patent, a design patent application is not published until issuance and that a design patent term is 14 yearsii from the issuance of the patent, instead of 20 years from the priority date for a utility patent.

In general terms, a patentable design should be embodied into, or applied to, a man-made tangible object.  In contrast, a purely abstract design or drawing is not patentable.  Using Google’s user-interface design as an example, the user-interface itself may not be patentable, but the user-interface claimed as a graphical user interface for or embodied on a computer display is a patentable design.  Accordingly, Google’s design patent, U.S. Pat. No. D599,372’s claim recites “the ornamental design for a graphical user interface for a display screen of a communications terminal, as shown and described”, thus tying the abstract design (the graphical user interface) to a tangible object (the display screen).

The originality bar requires that a design to be patentable must be derived from the individuals named as inventors. For example, a design which simulates a well known, or naturally occurring object or person is not original as required by the statute.iii

To be patentable, a design patent must also meet the noveltyiv and non-obviousnessv requirements similar to a utility patent. Specifically, the novelty of a design is determined by the “average observer test”, where a patentable design must be different from the appearance of any single prior design.  Similarly, the non-obviousness of a design is determined whether a designer of ordinary skill of the articles involved would have found the design obvious at the time the design was invented.

A patentable design must be ornamental, where the design must have an overall distinct appearance that is not dictated by the function of the article of manufacture.  The ornamental requirement of a design patent separates utility and design in that  a utility patent protects the way an article is used and works (35 U.S.C. §101), while a design patent protects the way an article looks (35 U.S.C. §171).  However, both design and utility patents may be obtained on an article if the invention resides both in its utility and ornamental appearance.  Indeed, while the legal protections offered by design patents and utility patents are different, in practice, the functionality and ornamentality of an article are not always easily separable and an article of manufacture may possess both patentable functional and ornamental characteristics.
Many foreign jurisdictions have comparable design protection schemes as the U.S. design patent system. For example, the European Community protects similar subject matter under the Community design systemvi, which unlike a European patent application, is a unitary right that has equal effect across the community countries.  Specifically, the community design may be protected if they are novel that is if no identical design has been made available to the public; they have individual character that is the “informed user” would find it different from other designs which are available to the public.

Unlike the U.S. design patent system, the European Community design is unexamined; applicants only pay an official fee and meet other formal requirements for registration.  The difference seems to suggest that it is more difficult to obtain a U.S. design patent, however, an examination of the file histories of design patents issued in 2009vii suggest that vast majority of design patents (81.6%) were allowed without ever receiving a rejection during prosecution, while only 1.2% received a prior art rejection.  Thus, for practical purposes, the U.S. design patent system may be viewed as more of a registration system similar to the European Community design registration, than an examination system.

Design Patent Filing Trends

U.S. design patent filing rates have been increasing throughout the years.  As seen in Fig 3viii, the number of design applications filed per year has increased from 17,413 applications filed in 2000, to 29,059 applications filed in 2010, which is an increase of over 50%.  Similarly, the number of design patents granted per year has also increased from 17,413 granted in 2000, to 22,799 granted in 2010, which is an increase of over 30% in the same period.

Figure 3: Design Patent Grant and Filing Trend from 2000 to 2010.

Due to the nature of the design patent, its applicability varies significantly across various technology sectors.  Table 1 lists the top 30 design patent assignees in 2010, and Figure 4 shows the industry breakdown of the top 30 design patent holders.

Table 1: Top 30 Design Patent Assignee as of 2010

Design Patent Assignee Number of Design Patents
Sony 2957
Samsung 2681
Nike 2317
Goodyear 1780
Matsushita 1749
Procter and Gamble 1641
Motorola 1500
Microsoft Corp. 1453
Hon Hai (Foxconn) 1444
Black & Decker 1387
Canon 1385
Honda 1358
Sharp 1299
Toshiba 1158
Kohler 1131
LG 1097
Dart Industries Inc. 1041
Wolverine World Wide Inc. 953
Nokia 926
Toyota 839
Colgate-Palmolive 772
IBM 767
Masco Corp. 765
Casio Computer Co. 716
Interlego A.G. 666
Apple 661
Bayerische Motoren Werke AG. (BMW) 654
U.S. Philips Corp. 615
Minka Lighting, Inc. 602
Rubbermaid Inc. 598

Figure 4: Industry Breakdown of the Top-30 Design Patent Assignees.

The industry sector that is the most active user of the design patent system is the consumer electronics sector, which accounts for 14 of the top-30 design patent assignees.  The top design patent assignees of the consumer electronics sector includes many of the major players in the field including Sony (the number one design patent holder), Samsung, Matsushita (Panasonic), Motorola, Toshiba, LG, Nokia, Hon Hai (Foxconn), Apple, and Microsoft (although Microsoft is not a consumer electronic company in the classic sense, it does hold design patents related to tablet designs, the Xbox home console designs, among others).

The second most active sector is the consumer goods sector, which for the purpose of this analysis is broadly defined to include kitchen wares, lighting, containers, tools, etc.  The other major industry sectors that actively seek design patents include the automobile industry (Toyota, Honda, and BMW) and the apparel industry (Nike and Wolverine).

Design patent activity may be associated with a new product release. For example, Apple’s design patent filing trend from1990 to 2010 is illustrated in Figure 5.  During this period, Apple released many products that now define the company including the iPod in 2001, the iPhone in 2007, and the iPad in 2010.  As seen in Figure 5, Apple has increased its design patent filing activity significantly over time, and likewise has been receiving an increased number of design patent grants.  Furthermore, it is observable that prior to or contemporaneous with a new Apple product release, there is an increase in design patent activity.  In fact, U.S. D469,109, which covers the design of the original iPod was filed on 10/22/2001, one day before the  first iPod was released.

Figure 5: Apples Design Patent Filing Trend from 1990 to 2010.

Litigation Trends

Overall, the number of design patent cases filed at in the district courts has increased significantly.  Figure 6 shows the numbers of court cases where at least one design patent either alone, or in conjunction with one or more utility patent were enforced in the United States.

Figure 6: Design Patent Litigation Trend Measured by Number of U.S. District Court Cases Filed.

Using the top-30 design patent assignees as a sample size, both litigation activities in the district courts and the International Trade Commission (ITC) are presented in Table 2, furthermore, Figure 6 shows all the assignees who is a plaintiff in at least one district court actions.  As seen in Table 2 and Figure 6, Apple is the most litigious among the top-30 design patent assignees.  Apple is the plaintiff of 7 design patent related district court cases and 1 ITC proceedings; it is also the defendant in 2 cases.  Some of the top design patent assignees such as Samsung which has a much bigger design patent portfolio than Apple (Samsung has 2,681 design patents while Apple has 661 design patents), have not enforce its design patent in a U.S. court or through the ITC.  In Samsung’s case, it is actually the defendant in 3 court cases and 1 ITC case, some of which are initiated by Apple.


Table 2: Top-30 Design Patent Assignees’ Litigation Record

Design Patent Assignee

Plaintiff – District Court

Defendant – District Court

Plaintiff – ITC

Defendant – ITC

Sony

0

0

0

0

Samsung

0

3

0

1

Nike

1

2

0

0

Goodyear

1

0

0

0

Matsushita

0

1

0

0

Procter and Gamble

1

4

0

0

Motorola

1

0

0

0

Microsoft Corp.

1

0

2

0

Hon Hai (Foxconn)

0

0

0

0

Black & Decker

2

2

0

0

Canon

0

0

0

0

Honda

0

0

0

0

Sharp

0

1

0

0

Toshiba

0

0

0

0

Kohler

1

0

0

0

LG

0

0

0

0

Dart Industries Inc.

0

0

0

0

Wolverine World Wide Inc.

0

0

0

0

Nokia

0

2

0

0

Toyota

0

0

0

0

Colgate-Palmolive

0

0

0

0

IBM

0

0

0

0

Masco Corp.

0

0

0

0

Casio Computer Co.

0

0

0

0

Interlego A.G.

0

0

0

0

Apple

7

2

1

0

Bayerische Motoren Werke AG.

1

0

0

0

U.S. Philips Corp.

0

0

0

0

Minka Lighting, Inc.

6

0

0

0

Rubbermaid Inc.

4

0

0

0

 

Figure 6: Top Plaintiffs of Design Patent Related District Court Action by A Top-30 Design Patent Assignee.

Apple vs. Samsung: design patent in the spotlight
Apple has been engaged in an international patent warfare against many of its rivals in the smart phone and tablet industry. Samsung, the recently crowned number one smart phone maker has taken the brunt of Apple’s wrath.

Currently there are at least 20 ongoing patent litigations between Apple and Samsung in a variety of jurisdictions.  Perhaps some of the most interesting skirmishes between Apple and Samsung are centered on design rights.  Although the controversy regarding design rights has recently reached the United States, they have been largely fought in Europe.

Apple achieved early victory in August 9th 2011 against Samsung when it was granted a preliminary injunction against Samsung’s Galaxy Tab tablet, barring with immediate effect all distribution of the product in the entire European Union except for the Netherlands on the grounds of an alleged infringement of Apple’s iPad-related Community Design Patent No. 000181607-000,  the European counterpart of U.S. Pat. No. D504,889.

Figure 7: Selected Figures of Community Design No. 000181607-0001.

Samsung was able to mitigate the blow when Düsseldorf district court (the Landgericht)  suspended the enforcement of the preliminary injunction on August 25th in all EU countries except in Germany, where the injunction is still in effect.  The preliminary injection was further affirmed on September 9th by the Düsseldorf Regional Court.

The swiftness of the injunction decision and creative defense arguments raised by Samsung that would make any cinephile proud including the “Space Odyssey” defense (citing unsuccessfully, Stanley Kubrick’s 2001Space Odyssey as prior art) and “Tomorrow People” defense (citing, the 70’s era British Sci-Fi series The Tomorrow People also unsuccessfully as prior art) has enshrined this case in the hall of fame of IP litigation.

The German injunction along with court victories in other jurisdictions by Apple is leading up to the battle in the United States both before the ITC and the Northern District Court of California, where Apple is currently seeking preliminary injunction against Samsung targeting the Galaxy S 4G phone and Galaxy Tab 10.1 tablet as well as other Android-based devices. Specifically, Apple asserts the following four intellectual property rights in the Northern District of California – three design patents and one utility patent:

Conclusion

The preliminary injunction and the ITC decisions in the United States are still forthcoming, but regardless of the outcomes, Apple’s ability to achieve significant legal victory in Europe demonstrates that design IP rights can be a potent tool in a company’s IP portfolio.  Considering that design rights are inexpensive and comparatively easy to obtain, they can be powerful, capable of being enforced rapidly, and thus deserves the attention of IP practitioners.

-By Steven Gong

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