The battle of Apple patents against Samsung1 on the specific design features of the Apple iPhone has changed the landscape of intellectual property (IP). Now, inventors beyond the tech sector are realizing the commercial value of design patents to protect their intellectual property. Read on to find out how design patents can be used as a strategic tool to protect your outdoor recreation products.
CONTEXT: Historically, design patents (how a product appears when you look at it) have been eclipsed by utility patents (which cover how a product works) and trade secrets (information a company wants to keep confidential) like means of providing meaningful intellectual property. protection of a company’s product. There are advantages and disadvantages to creating design, utility, or both design and utility patents to protect a product. Generally, design patents are cheaper and faster to obtain than utility patents, but they offer a narrower scope of protection than a utility patent because only certain limited characteristics are protected (an inventor or a manufacturer may attempt to cover the entire “article of manufacture” with multiple design patents).
After Apple vs. Samsung, the scope of protection afforded by a design patent has potentially increased; and the damages available for design patent infringement may include lost profits, not just lost royalties.
HOW APPLE v. SAMSUNG CHANGED THE LANDSCAPE OF DESIGN PATENTS: Apple’s long-standing fight with Samsung over iPhone functionality seems like a worthy legal investment, as Apple’s damages are expected to be in the order of $ 500 million. The case highlighted the potential value of design patents and strengthened the ability of a patentee to enforce their design patent rights in order to collect greater damages from infringers.
The design patents at issue in the Apple v Samsung litigation cover a variety of iPhone design features. One of the patents, U.S. Design Patent No. D593,087 (see representative figure below), covers a rectangular phone with rounded corners and a round “home” button at the bottom of the screen. Another Apple patent, U.S. Design Patent No. D618,677 (see representative figure below), covers the grid arrangement of icons on the smartphone screen. A third Apple patent, U.S. Design Patent No. D604,305, covered onscreen icons.
None of Apple’s design patents covered all of the functionality of the iPhone. Features shown in dashed lines illustrate features not claimed by Apple within the scope of the invention – they provide context for better understanding the design features covered.
The court found that several of Samsung’s smartphones infringed Apple’s design patents because they included design features covered by one or more of Apple’s design patents. Interpreting design patents more broadly than in the past, the court ruled that the rectangular-shaped iPhone case was a design feature protected by Apple’s design patent. But the game-changing aspect of the litigation was the court’s finding that at least some of the iPhone’s patented design features were so integral to the design of the phone that they couldn’t be separated from the features. not patented. Design patents were found to cover the entire “article of manufacture”, protecting a wider scope of iPhone design. This court finding enabled Apple to successfully argue that Samsung should turn over its full profits for sales of counterfeit smartphones, resulting in substantially more damage compensation than generally available for design patent infringement, typically. calculated on reasonable royalties from the resulting sales. .
HOW CAN OUTDOOR REC PRODUCTS BENEFIT FROM DESIGN PATENTS? Consider how the “design feature” versus “article of manufacture” patent might apply to an outdoor leisure product, such as a backpack.
In U.S. Design Patent No. D809,799 (representative figure below), only part of the backpack product is covered by a design patent: the characteristics of the backpack strap underlined by solid red lines define the scope of the patent. The broken black lines, representing the body of the backpack, are not covered by the design patent. A competitor’s product would infringe the ‘799 design patent if the competitor’s backpack strap had similar webbing characteristics, even if the competitor’s backpack had other characteristics. Since the design patent covers only one characteristic of the backpack, any damages recoverable by the patent owner would likely be limited to reasonable royalties, unless the inventor was successful in asserting (such as Apple) that the straps were “integral” to the entire backpack design.
Another backpack product is illustrated in U.S. Design Patent No. D807,026 (representative figure below). Here, the entire backpack, delimited by solid red lines, is allegedly covered by the design patent – an “article of manufacture” patent.
The most extensive article of manufacture design patent has advantages and disadvantages for an inventor. If the design patent of the article of manufacture is infringed, damages are likely to be calculated on the basis of loss of profit. But, a manufacturing item design patent is only infringed if a competing backpack includes all feature of the ‘026 design patent. This means that a competitor can easily design “around” the patent by modifying only a few features.
Trade-offs in the scope of a design patent must be taken into account when developing a design patent strategy for your outdoor recreation products.
WHY APPLY FOR A DESIGN PATENT NOW? :
Apple’s victory over Samsung shows:
Strategically filed design patent applications have the potential to offer broad protections against design counterfeits by competitors;
Damages for loss of profit may be recovered from an infringing competitor if your design patent in fact covers the entire manufactured item; or a design feature is considered to be an integral part of the overall design of the product.
Considering the relatively low costs and shorter timeframes for obtaining design patents compared to utility patents, design patents offer a relatively quick and cost effective way to obtain patent protection for your product and to obtain patent protection for your product. ” obtain “patent pending” status. Among other things, “patent pending” status can be an effective marketing tool as well as a deterrent to potential infringers.
Waiting to apply for a design patent until your product has been launched, or even after disclosing information about your product in a non-confidential setting, can affect your ability to obtain patent protection – the inventors or manufacturers may inadvertently lose patent protection.
Proactively discussing your options with a qualified patent attorney will help you avoid potential pitfalls and allow you to maximize your patent rights in a competitive industry. Holland & Hart’s outdoor recreation team offers sophisticated design patent expertise. We help nascent and established businesses develop patent strategies so that they can protect and enforce design patents and other intellectual property rights.
1Apple Inc v Samsung Electronics Co, 11-CV-01846-LHK, US District Court for the Northern District of California