Why Design Patents Make Sense for Online Marketplace Sellers | Dunlap Bennett & Ludwig LLC


“The more you know, the less you need.”
― Yvon Chouinard, Let My People Go Surfing: The Education of a Reluctant Businessman

In a design patent application, “the claimed subject matter is the design incorporated in or applied to an article of manufacture (or part thereof) and not the article itself”. United States Patent and Trademark Office (USPTO) Manual of Patent Examination Procedure, Chapter 1500, Section 1502.

In other words, a design patent application seeks to protect the appearance of a product, not its function (i.e., not its usefulness, which is the proper subject matter of the other type of patent application, utility patent application). This explains why, if you open a design patent, you will quickly notice that it is over 90% designs.

The second major difference between the design patent application and the utility patent application is that the design patent application allows only one claim. In other words, as a general rule, the design patent application can protect only one embodiment, i.e. only one “aspect” of the product can be protected per application. (There are exceptions/qualifications to this rule, but we’ll save that for another blog.) So over 90% of a typical design patent application are drawings of the same product, presented from sufficient views to enable a person skilled in the art.

That said, a design patent applicant does not need to claim their entire product and therefore can expand the scope of their single claim. The broadening of scope is perhaps because solid lines in design patent drawings are the only things that define what a claim is. Thus, the less you draw – in solid lines – the wider the resulting patent would be since the infringement is found where the potential infringer has at least claimed everything, whether or not he has additional elements.

Since a picture is worth a thousand words, here is a patented hammer head (US Patent No. D719,242). Note that the handle part of the hammer is “excluded” with dotted lines. Thus, the claim is limited to the single part of the hammer head (shown in solid lines). The legal consequence is that someone infringes this patent if they have a hammer head that looks like the one seen in the attached image – independently of what their hammer handle looks like.

Some might shrug their shoulders and say, “So what, I heard that design patents offer very little protection.” And I would say, ask Samsung®, whose patent infringement lawsuit against Apple® resulted in a 9-figure judgment, centered on three patents, including two design patents. In addition, online marketplaces like Amazon® honor design patents as intellectual property rights that they enforce through their “Amazon Infringement Report Form”, whereby a patent holder/seller (from design) can have an infringer’s Amazon listings removed (assuming Amazon makes that decision). And since design patent applications, compared to utility patent applications, are much less expensive, go through the USPTO faster, and have a much higher likelihood of being granted as a patent, this actually an affordable way to apply and enhance your product. And now that you know more, you can claim less with greater impact.

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