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.

The mere mention of design patents in the title of this article has already gotten most of you thinking about the ongoing trial of Apple against Samsung. Many are waiting to see which side of the dispute I’ll favor and some people are ready to unleash their arguments against my position. They’ll have to keep waiting, though, because this article isn’t about Apple v. Samsung…well, as much as any article on design patents right now can manage to not be about Apple v. Samsung.

While we wait through what many are characterizing as the “boring” part of the trial, I’d like to take some time to discuss design patents in general. I’m sure that many industrial designers who are following the Apple v. Samsung case are wondering how a handful of design patents, the oft-maligned afterthought of the intellectual property (or “IP” world), can make up a significant part of a $2.5 billion lawsuit. More importantly, designers should be interested to know what the impact of this case will be on design patents and how that will affect their own work.

From a purely legal standpoint, nothing is likely to change because of Apple v. Samsung, regardless of the outcome. Any design patent not involved in the trial will be the same on the day after the verdict as it was the day before. The decision in Apple v. Samsung is going to be based on how the jury interprets the facts of the case. The only way any law has a chance of being changed is if a decision gets appealed.

The real potential for impact, however lies in the mere fact that the design and business worlds are paying close attention to the design patent side of this case in the first place. Design patents have been around for over 150 years and in that time have only seen limited usage. Sure, many people or corporations have sued in the past to enforce their design rights with some success, but both the number of design patent lawsuits and the number of design patents granted pale in comparison to those of utility patents.

The traditionally meager status of design patents is the reason why many designers are likely surprised by the prominence of design patents in Apple v. Samsung. In all reality, practically everyone who has an opinion holds design patents in the lowest esteem of all the different forms of IP protection. You’ll find that most people listing the different areas of intellectual property will rattle off copyright, trademark and patent while actually only thinking of utility patents—the more esteemed form of patent protection that is geared toward what an invention is or how it functions.

If asked about protection for the visual aspects of a product’s design, that same person might then dismissively mention the existence of a design patent before relaying a common view about them: they’re easy to get around, but they’re cheap and easy to get. This perspective views design patents, at best, a quick way to get a patent number to slap on a product.

The negative view of design patents is so widespread that even most designers feel that there is no meaningful way to protect the appearance of a product. The fact is that while many of the innovations that come out of design and design thinking find adequate protection in utility patents, most designers feel that there is no meaningful way to protect the appearance of a product. As a result, designers often feel that a substantial part of their work is left vulnerable to copying. This feeling exists in spite of the fact that an entire section of IP law in the United States has been carved out for the protection of a product’s visual design.

Before we get too far in, it is important to understand the different types of IP protection and how they relate to each other. Put as simply as possible, patents protect things and methods for making or using things, trademarks essentially protect brand identity and copyrights protect artistic expression. As mentioned above, patents are further broken down into utility patents and design patents. While methods fit exclusively within the area of utility patents, physical things can find protection on both the utility and design sides.

Essentially, the structure or functional elements of a thing can be protected by utility patents, and the physical appearance can be protected by design patents. If there are any features of a product that straddle the line between being functional or being visual, you can often find a way to get protection from both types of patents. This alone is a major advantage of design patents over trademarks and copyrights, which both specifically exclude coverage for anything functional (the recent grant of trademark protection to Hershey’s notable chocolate bar pattern notwithstanding). To get design protection for something that has unique characteristics both visually and functionally, all you have to do is to find a way to present it so that the appearance of what you’re protecting is dictated more by aesthetics than by function, if only slightly.

While Apple v. Samsung isn’t currently rewriting any design patent laws, it’s certainly putting design patents in a position that makes them hard to ignore. Apple’s focus on its design rights with respect to a product that is also covered by over 200 utility patents (by Apple’s own count) is making people realize that, if you’re serious about design, you need to seriously consider design patents. The key for designers going forward is going to be knowing what it means to be serious about design patents.

Unfortunately, I can’t simply say that the common, dismissive view of design patents is absolutely false and that filing more design patent applications and suing more people for design patent infringement will fix everything. The fact is that not all design patents are created equal, and that it’s really easy to end up with a bad one. If you go into the patent process with the view that you’re just trying to get a cheap and easy patent, a design patent can fit that bill, but it may prove to be worth about the amount of consideration and time that went into it. Often, this ends up being very little or nothing at all. On the other hand, with the right thought process and a little extra effort, it is actually possible to get valuable coverage from a design patent.

The problem is that the cheap and easy approach to design patents is so pervasive that it weighs down the entire design patent system. The result is that each of the components of this view have been almost accepted as fact. However, the thinking that design patents are easy to avoid, that they’re cheap and that their only redeeming quality is that they’re easy to get, are really misconceptions about design patents that arose over time from lack of understanding of or appreciation for design itself. As you can see, this problem is bigger than three individual design patents and can’t be fixed by one simple trial, but designers can use the opportunity presented by the current attention to design patents as a way to take steps to erase these misconceptions.

To understand how to get valuable design patents we need to understand why so many bad design patents have been filed and have been issued in the past. This involves exploring each misconception about design patents to see that they are not indicative of inherent limitations of design patents in general. Of course, simply knowing that good design patents are a possibility is only one step to actually getting one yourself. Fortunately, there are a few simple things that designers can do themselves to ensure that the design patents they get or that cover their designs are worth the effort and expense.

Misconception 1: Design Patents Are Easy to Get Around

Everything starts with the idea that design patents are inherently narrow in scope and that any design patent can be avoided or “designed around” by simply making some minor change to the original design. Historically, it’s true that most of the people who have tried to sue someone for infringement of a design patent have found that their patents can’t protect against much more than blatant copies. We can see that this isn’t always the case though, by the simple fact that Apple’s case against Samsung has made it this far. The reason why people have such a hard time covering other products with their design patents, however, is really a problem with how those specific patents are put together and not because of some built-in limitation of design patents in general.

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