Hasta La Ideas

*The views expressed herein are solely those of the author and do not necessarily represent the view of his firm or its clients.

Now that we’ve seen how a valuable design patent strategy can begin to take shape, we’ll step back a little and look at how even a known positive aspect of design patents ended up being misused to their detriment. This can also give us a clue as to where to start to turn things around and rehabilitate the reputation of design patents.

Misconception 3: Design patents are, at best, just an easy way to get a patent number on a product.

In all the ways that common misconceptions about design patents are wrong, the notion that they’re easy to get is actually correct. That is, compared to utility patents, they’re relatively easy to get. The patent process itself is confounding, difficult and full of seemingly inane rules no matter which side you’re on. However, once a utility patent is filed, it often faces an uphill battle to actually be allowed by the United States Patent Office. For one, the waiting list for utility patents to be examined is between about two and three years. Once examination starts, the back-and-forth arguing with the patent office over whether or not a patent is actually deserved can take at least another year and can be endlessly frustrating.

Design patents, on the other hand, only sit for about six months to a year before being examined. Even better, many design patents are immediately allowed or only face formal objections, rather than more difficult substantive rejections, that are almost automatic for utility applications. Even taking a more strategic approach to design patent filing may not have a significant impact on examination times because the sheer volume of design patent applications filed is so much lower than with respect to utility patents.

Many people who are otherwise unconcerned with the visual aspects of a product seek to use the ease of getting a design patent to their advantage. Their goal is to quickly get a design patent, even a cheap one, to be able to honestly mark a product as “patented” or to have some minimal level of protection while they wait for their utility patents to issue. When people take this approach, they really don’t care what they end up with; they just want it to be cheap and quick. This is a big part of the reason why so many bad design patents exist.

The problem that stems from all the bad design patents out there is that, eventually, people do decide to try and enforce some of them. The courts have always seemed to struggle not only in trying to make sense of visual design but also simply trying to find a way to keep design patents, including bad ones, afloat. More often than not though, actually winning a design patent lawsuit proves exceedingly difficult. This phenomenon fed back into the perception that design patents themselves are inherently weak, causing that myth to become widespread.

The perception of design patents was on a downward spiral for some time, during which repeated half-hearted attempts at design protection were followed by repeated unsuccessful but costly attempts at design patent enforcement. It got so bad that even in cases where those involved felt that the product’s design really did matter, the motivation behind any accompanying design patents was simply the thought that “well, this does have a design so we might as well file a design patent.”

In spite of all this, the Federal Circuit recently opened the door somewhat for design patents. In what would seem like a very innocuous case involving a design patent for fingernail buffers, the Court removed a critical aspect of the law of design patent enforcement that was partly what made winning a design patent lawsuit so difficult. In the absence of the requirement that design patent plaintiffs spell out the “points of novelty” of their design before it’s compared against the alleged infringing product, design patent enforcement may now prove easier. In one example, the footwear maker Crocs was successful in a lawsuit against some knock-offs that actually had some noticeable differences from the patented design (this should also ease any concerns that a design has to be universally lauded to deserve design patent protection).

Even outside the courtroom, people may be paying more attention to existing design patents when developing new products. Notably, while Apple and Samsung are still locked in litigation over the design of Samsung’s Galaxy II phone and Galaxy Tab, Samsung openly admitted that a goal of the design of its successor Galaxy Nexus phone was to be different enough from Apple to avoid even a hint of future design patent issues.

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