The variety of granted design patents has tripled over the previous 10 years. To seek out out why — and the way design patents are getting used to safe worth for progressive merchandise — Bruce Berman interviews IP legal professional 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 Issues.”
Ferrill is a associate at Finnegan whose regulation follow focuses on all elements of design patents, together with prosecution, counseling, post-grant, litigation, and enchantment. Hinman headed IP enterprise and licensing at Phillips, IBM, Verizon, and InterDigital. He has negotiated IP transactions, together with these associated to design, in lots of international locations. At the moment, he’s Chief Innovation Officer at Aon.
The notion of design patents is that they’re inferior to utility patents. The pondering goes: If a design can simply be labored round, what advantages does a design patent supply?
From their completely different views, Ferrill and Hinman underscore why this can be a defective and in the end poor framework for conceptualizing the worth of design patents. Whereas Samsung was pressured to pay Apple greater than $500 million for infringing its design patents, damages awards usually are not sometimes what the homeowners of design patents search. Forcing a competitor to cease utilizing the design — to “design round,” in different phrases — is the purpose.
Ferrill and Hinman describe the sorts of merchandise that profit from design patents probably the most in addition to the most important advantages of design patents. Sure, they difficulty extra shortly and are extra reasonably priced. However there’s additionally the truth that design is common — whereas the “true that means” of patent claims could be endlessly debated.
Key Responses
Are design patents harder to defend? That was one of many knocks I’d heard in opposition to design patents prior to now. However with the large [$500+ million] win for Apple, I feel that each one modified.
Elizabeth Ferrill: “One of many fallacies I discover is folks spend time evaluating the breadth of a utility patent to the breadth of a design patent. They don’t seem to be the identical factor. It’s form of like evaluating the breadth of a utility patent to the breadth of a trademark: It is perhaps enjoyable for regulation professors, however virtually talking, it’s not likely a helpful train.
Design patents have a selected goal. When the consumer understands what they’re getting and after they’re getting them for the suitable goal and after they’re utilizing them the way in which — the way in which they’re form of supposed for use — I feel they are often very highly effective.
I keep in mind a chat that was given by a gentleman who labored for a shoe firm and he stated, ‘Oh, we love our design patents. Within the final 10 years, I’ve despatched out 600 letters and filed 5 complaints. As a result of folks get the letters, they see the issue, and so they repair the issue. Our design patents are doing what we wish them to do.’
They don’t do the identical factor a utility patent does, and I don’t assume they’re designed to do this.”
At Phillips, which is now out of the buyer electronics enterprise, design patents are up 95%. Brian, I do know you’re not concerned there anymore, however you might need some consciousness. What are they submitting design patents on in the event that they’re not doing client electronics?
Brian Hinman: “I dealt quite a bit with design at Phillips. We gained a ton of design awards for lots of the healthcare merchandise that Phillips, [as a business,] actually has morphed into. You’re appropriate, they’ve offered off and divested the whole lot of their client electronics. They nonetheless have a number of client merchandise, just like the Sonicare toothbrush, which has a really distinctive design. You’ve received a number of MRI machines, CAT scans, CT and all the like — purposeful designs, proper?
Within the healthcare setting, the performance of [these] designs is vital. It’s vital to essentially differentiate these merchandise as a result of they’ve to satisfy particular security and efficiency requirements. That’s the place the performance is available in….
It’s true that the basic distinction between design patents and utility patents is that design patents shield the way it seems and utility patents shield the way in which it’s used and works. So, design patents are defending the decorative traits. However when a design is purposeful, it does what it’s anticipated to do and does it nicely.
A great design is a goal that’s crafted in such a approach that it’s going to constantly and reliably execute a selected operate with out the performance. A design might look good, however it might in the end fail to satisfy the wants of the consumer. The notion that aesthetics and performance are mutually unique can be a delusion.”
Elizabeth Ferrill: “I’d agree with Brian. One of many challenges in america is that our system is comparatively sluggish…. It takes 20 months, greater than a yr and a half, to get a design patent. There are specific industries that would profit from design patents — I’m pondering vogue — however it’s not essentially sensible for them in lots of circumstances due to the product cycle….
Lots of what I’d name extra mature industries — or industries with slower product cycles — do profit from design patents. Particularly in an space like medical units, the place perhaps there isn’t a need to vary it each six months as a result of that most likely introduces error to the one who’s utilizing the system. As soon as they discover ways to use the system, let’s maintain it that approach for some time, proper?
These are areas that positively can profit from design patents as a result of they’re not as involved concerning the size of time it takes to get them.”
With regards to design patents, what ought to we be occupied with?
Elizabeth Ferrill: “On the finish of the day, if you’ll implement any of those [intellectual property] rights, it’s a couple of story — a narrative which you could inform the choose and a narrative which you could inform the jury. Having a couple of photos in your story can positively make it simpler for the choose and jury to grasp what’s occurring.
So, [design patents] could be invaluable on various ranges. It could possibly virtually be a solution to get somebody’s consideration. So even when your demand letter, for instance, contains some very highly effective utility claims, perhaps the design patent is the factor you placed on the entrance web page to get folks’s consideration.”
Extra Highlights
Take heed to the complete episode to find out how design patent safety intersects with commerce gown; which sorts of graphical consumer interfaces could be protected with design patents; how the auto trade approaches defending its designs; the unique standards for design patent obviousness; and far more.
“Design patents are a chunk of the puzzle that in the end matches collectively to guard income streams,” Hinman summarizes.
