Intellectual Property Alert – Financial Institutions and Design Patents

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A few days ago in Chicago, WePay Global Payments sued Amazon, Wal-Mart, McDonald’s, Apple and Tesla for design patent infringement. These lawsuits join others filed by WePay on the same design patent over the past five months against JPMorgan Chase, Bank of America, PNC Bank, PayPal and Samsung.

Design patents cover the ornamental aspect of a manufactured article. Think about the shape, iconography and user interface of your smartphone. In fact, while Steve Jobs is often considered one of the most prolific inventors of recent times, no one mentions that the bulk of his granted patents are design patents rather than utility patents. Moreover, Apple’s recent victory over Samsung’s stratospheric patent damage in their smartphone wars was primarily driven by Apple’s asserted iPhone design patents (including one relating to the appearance of its graphical user interface (GUI) “slide to unlock”).

The Vedder Price IP team “talks” about the design patent. Our team has:

  • filed hundreds of design patents not only for graphical user interfaces (e.g., electronic payment, board games, video games, lab equipment, TV programming guides), but also for consumer products, cosmetic applications (eyelashes , applied nails), jewelry, product packaging, small kitchen appliances (air fryers, coffee makers, espresso machines, grills, pop-up toasters) and toys.
  • design patent infringement litigation.
  • has advised potential clients and investors on the risks and value associated with particular design patents and design patents generally.

Simply put, we should all talk with our clients about design patents. Let the Vedder IP team help you with these conversations. Design patents fill a number of intellectual property gaps.

  1. Design patents provide copyright-like protection for useful articles, a form of protection that copyright law itself actively tries to avoid with a few exceptions. See Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002, 1016 (2017) (“an artistic characteristic of the design of a useful article [here: a cheerleading uniform] is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art distinct from the useful article and (2) would be considered a pictorial, graphic or sculptural work protectable, either in itself, or in another medium if it is imagined separately from the useful article”).
  2. Design patents cannot be invalidated as abstract ideas, a problem that has plagued utility patents (especially those associated with software) recently.
  3. Design patents are inexpensive to prepare, granted quickly and are easier to control on the Internet than utility patents.
  4. Design patents provide an important avenue of protection for graphical user interfaces. Apple vs. Samsung and now WePay vs. anyone with a website and carrying out monetary transactions are prime examples. To emphasize the relative simplicity of the design patents, here is the cover of WePay’s design patent, followed by the three-panel side-by-side comparison of PNC’s Zelle product with the second embodiment of that patent:
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