Time to Double Down on Design Patents

Time to Double Down on Design Patents

In October of this year the Supreme Court of the United States is set to hear oral arguments on Samsung’s petition to try and overturn Apple’s legendary jury verdict which originally awarded over $900 million in damages because Samsung’s rectangular phones with apps apparently looked enough like Apple’s rectangular phones with apps. The DC Federal Appeals court knocked the jury verdict’s amount down to a little more than a half billion, but the numbers are still remarkable.

At issue in the appeal is whether it was correct that under the “profit disgorgement” award, the plaintiff should win all the profits from the phones or just profits proportional to the patented feature.

Legal Takeaway: Design patents should not be underestimated. Contrary to popular uninformed opinion, they are not the little brother patent to the utility patent. They serve different, but important purposes. And while design patents do not contain a lot of description in the form of words, the old adage remains true that a picture paints a thousand words. In some respects, design patents are easier and less expensive to litigate than utility patents. After all, the test for infringement is essentially a sight comparison for the jury who answers the question of whether an “ordinary observer” would be confused with the defendant’s product when compared to the patent drawings. Generally speaking, design patents are cheaper and faster to acquire than utility patents, and the ability (for now anyway) to completely disgorge the profits of an infringer is an impressive remedy that is not even available for infringement of a utility patent. We believe that every business that sells a product should seriously consider design patent possibilities for its products in addition to utility patents. Design patents are only supposed to protect the look and appearance of a product, but you can bet that if you have a successful looking product, your competitors will try to copy that appearance.

© 2016 Buche & Associates PC. This article was written by John Buche, J.D. John is a patent attorney who practices in San Diego California and Houston, Texas. He has acquired hundreds of patents including utility and design patents for his clients and has litigated a variety of design and utility patent matters. jbuche@buchelaw.com and www.buchelaw.com.