Understanding IP Matters: The Mysteries of Design Patents – Preventing Abuse Before It Happens

The number of granted design patents has tripled over the past 10 years. To find out why — and how design patents are being used to secure value for innovative products — Bruce Berman interviews IP attorney and design patent litigator Elizabeth Ferrill and Brian Hinman, former Chief IP Officer at Philips, on Episode 6 of Season 3 of his Top 2- ranked podcast, “Understanding IP Matters.”

Ferrill is a partner at Finnegan whose law practice focuses on all aspects of design patents, including prosecution, counseling, post-grant, litigation, and appeal. Hinman headed IP business and licensing at Phillips, IBM, Verizon, and InterDigital. He has negotiated IP transactions, including those related to design, in many countries. Currently, he is Chief Innovation Officer at Aon.

The perception of design patents is that they’re inferior to utility patents. The thinking goes: If a design can easily be worked around, what benefits does a design patent offer?

From their different perspectives, Ferrill and Hinman underscore why this is a faulty and ultimately poor framework for conceptualizing the value of design patents. While Samsung was forced to pay Apple more than $500 million for infringing its design patents, damages awards are not typically what the owners of design patents seek. Forcing a competitor to stop using the design — to “design around,” in other words — is the point.

Ferrill and Hinman describe the types of products that benefit from design patents the most as well as the biggest benefits of design patents. Yes, they issue more quickly and are more affordable. But there’s also the fact that design is universal — whereas the “true meaning” of patent claims can be endlessly debated.

Key Responses

Are design patents more difficult to defend? That was one of the knocks I’d heard against design patents in the past. But with the big [$500+ million] win for Apple, I think that all changed.

Elizabeth Ferrill: “One of the fallacies I find is people spend time comparing the breadth of a utility patent to the breadth of a design patent. They are not the same thing. It’s sort of like comparing the breadth of a utility patent to the breadth of a trademark: It might be fun for law professors, but practically speaking, it’s not really a useful exercise.

Design patents have a particular purpose. When the client understands what they’re getting and when they’re getting them for the right purpose and when they’re using them the way — the way they’re sort of intended to be used — I think they can be very powerful.

I remember a talk that was given by a gentleman who worked for a shoe company and he said, ‘Oh, we love our design patents. In the last 10 years, I’ve sent out 600 letters and filed five complaints. Because people get the letters, they see the problem, and they fix the problem. Our design patents are doing what we want them to do.’

They don’t do the same thing a utility patent does, and I don’t think they’re designed to do that.”

At Phillips, which is now out of the consumer electronics business, design patents are up 95%. Brian, I know you’re not involved there anymore, but you might have some awareness. What are they filing design patents on if they’re not doing consumer electronics?

Brian Hinman: “I dealt a lot with design at Phillips. We won a ton of design awards for a lot of the healthcare products that Phillips, [as a business,] really has morphed into. You’re correct, they’ve sold off and divested everything in their consumer electronics. They still have a lot of consumer products, like the Sonicare toothbrush, which has a very unique design. You’ve got a lot of MRI machines, CAT scans, CT and all of the like — functional designs, right?

In the healthcare environment, the functionality of [these] designs is critical. It’s critical to really differentiate those products because they have to meet specific safety and performance standards. That’s where the functionality comes in….

It’s true that the fundamental difference between design patents and utility patents is that design patents protect how it looks and utility patents protect the way it’s used and works. So, design patents are protecting the ornamental characteristics. But when a design is functional, it does what it’s expected to do and does it well.

A good design is a purpose that is crafted in such a way that it’s going to consistently and reliably execute a particular function without the functionality. A design may look good, but it may ultimately fail to meet the needs of the user. The notion that aesthetics and functionality are mutually exclusive is really a myth.”

Elizabeth Ferrill: “I would agree with Brian. One of the challenges in the United States is that our system is relatively slow…. It takes 20 months, more than a year and a half, to get a design patent. There are certain industries that could benefit from design patents — I’m thinking fashion —  but it’s not necessarily practical for them in many circumstances because of the product cycle….

A lot of what I would call more mature industries — or industries with slower product cycles — do benefit from design patents. Especially in an area like medical devices, where maybe there isn’t a desire to change it every six months because that probably introduces error to the person who’s using the device. Once they learn how to use the device, let’s keep it that way for a while, right?

Those are areas that definitely can benefit from design patents because they’re not as concerned about the length of time it takes to get them.”

When it comes to design patents, what should we be thinking about?

Elizabeth Ferrill: “At the end of the day, if you are going to enforce any of these [intellectual property] rights, it is about a story — a story that you can tell the judge and a story that you can tell the jury. Having a few pictures in your story can definitely make it easier for the judge and jury to understand what’s going on.

So, [design patents] can be valuable on a number of levels. It can almost be a way to get someone’s attention. So even if your demand letter, for example, includes some very powerful utility claims, maybe the design patent is the thing you put on the front page to get people’s attention.”

More Highlights

Listen to the entire episode to learn how design patent protection intersects with trade dress; which types of graphical user interfaces can be protected with design patents; how the auto industry approaches protecting its designs; the unique standards for design patent obviousness; and much more.

“Design patents are a piece of the puzzle that ultimately fits together to protect revenue streams,” Hinman summarizes.