The Strategic Use of Design Patents

POSTED BY Sarju Bharucha AT 5:35 P.M. MARCH 18, 2010

Design patents are a valuable, yet often overlooked, form of intellectual property (IP) protection that can play an important role in aligning a company’s IP with its business strategy. Design patents are typically utilized in industries where the aesthetic qualities of the product can enhance the brand and create customer loyalty, such as consumer products. However, design patents are a form of IP that should be considered by all industries as they can improve your IP portfolio in a cost-effective manner.

Although design patents have a shorter lifespan (14 years from date of issue by the USPTO), they allow inventors the opportunity to strengthen their inventions by protecting the ornamental appearance or visual characteristics related to the non-functionality of inventions. The ornamental appearance or visual characteristics include a configuration or shape of an article, the surface ornamentation on an article, or both. Thus a design patent helps strengthen IP protection by looking beyond the structural and functionality of an invention that can be separately captured by utility patents.

Generally, requirements for obtaining a design patent include that the design be ornamental, novel, and not obvious to a designer of ordinary skill of the type of product in question. Additionally, the requirements include filing drawings or photographs that define the scope of patent protection. These drawings or photographs typically demonstrate what is “new” about the invention in the broadest possible terms, while distinguishing over what is shown in the prior art. It is important to note that careful procurement of the original design patent can result in a broad scope of protection, one which can protect not only the particular embodiment of the design, but perhaps the general design concept as well.

Four key points that support considering the strategic advantages of filing design patents include:

1. Cost
   The cost of a design patent is typically less expensive than a utility patent. This allows companies or individual inventors to obtain multiple design patents on different aesthetic features of a single design in a non-cost prohibitive way. Additionally, there are no maintenance fees for design patents and reduced legal fees as design patents are restricted to one claim unlike utility patents.
   
   
2. Anonymity
   Design patents are not subject to application publication; and thus remain anonymous until issuance, allowing companies or individual inventors to “fly under the radar” while in the midst of product development. Typically, it takes a design patent about 1-2 years from filing to issuance. Alternatively, the USPTO has implemented a “rocket docket” type of examination procedure, resulting in shorter processing times when bringing product to market is imminent.
   
   

3. Higher likelihood of issuance
   A January 2010 blog post at Patently-O, a respected patent law blog, discussed the review of 1049 file histories that had issued in the previous 12 months. The findings were very interesting. Within this dataset:
   • 5 filings were rejected on novelty grounds and 8 filings were rejected on obviousness, only 4% received a final notice of rejection
   • Over 80% were never rejected during prosecution

Between fiscal year 2005 – 2009, design patents had an allowance rate of about 90%, based on the most recent USPTO annual report.

4. Secondary meaning¹
   Obtaining design patent protection allows a company or individual inventor to secure the design of the product once it is thrust into the marketplace. It allows customers to begin associating the product design with the company or functionality of the product itself, building brand and developing secondary meaning. This secondary meaning may lend its hand to trade dress protection, potentially prolonging the products’ IP protection.

As an example, consumer product companies like Procter & Gamble (P&G) have created a broad IP portfolio around their Gillette brand and razor blade technology. In order to contribute to Gillette’s brand recognition and strong IP protection in the market place, P&G has protected and nurtured their products using utility patents, design patents, and other forms of IP such as trademarks in various parts of the world, supporting their 70% share² of the approximate $10B safety razor market.

For instance, P&G holds utility patents that capture IP around the method of making the razor blades (e.g., US 7,665,199); and the razor blade unit or assembly itself (e.g., US 7,178,243). Moreover, they have protected the design of their razor blades by utilizing design patents (e.g., USD422751). Additionally, Gillette/P&G has also enforced their IP to maintain their position in the razor blade market (See Gillette Co. v. Energizer Holdings Co. (Fed. Cir. 2005)). Thus, by utilizing various forms of IP and by enforcing their IP, P&G has built brand confidence and customer alliance with their Gillette products.

Figure 1. US6,212,777 – “Safety Razors” Gillette Company

In conclusion, the use of design patents, in conjunction with utility patents and other forms of IP, can strengthen and enhance the value of a company’s IP portfolio and brand. Design patents should be leveraged as part of an overall IP Strategy to support alignment between business, technical and IP goals.

¹From “businessdictionary.com”: Consumer-imputed meaning of a brand name or symbol, different from its commonly understood (primary) meaning. Under copyright law, an already common name or symbol must acquire distinctiveness through a secondary meaning for it to be granted exclusive trademark rights.
²http://www.stuff.co.nz/sunday-star-times/features/2329747/Why-the-shaving-market-is-so-cut-throat