Between 2005 and 2020 the number of U.S. design patent grants almost tripled. The increased focus on product form (“look”) as a part of function, has forced more businesses and creators, especially those in China, to take design patents seriously.
In the latest episode of “Understanding IP Matters” from the Center for Intellectual Property Understanding (CIPU), host Bruce Berman asks former Philips Chief IP Officer Brian Hinman and Finnegan trade secret attorney Elizabeth Ferrill, “Why are design patents more important today and how are they being used?”
Their responses were revealing.
Episode 6 of Season 3 of CIPU’s Top 2- ranked podcast is now available to hear for free. Below are excerpts.
Elizabeth Ferrill: “One of the fallacies I find is people spend time comparing the breadth of a utility patent to the breadth of a design patent. They are not the same thing. It’s sort of like comparing the breadth of a utility patent to the breadth of a trademark: It might be fun for law professors, but practically speaking, it’s not really a useful exercise.
“Design patents have a particular purpose. When the client understands what they’re getting and when they’re getting them for the right purpose and when they’re using them the way — the way they’re sort of intended to be used — I think they can be very powerful.”
Understanding IP Matters: The Mysteries of Design Patents – Preventing Abuse Before It Happens
It’s Not About Damages
“From their different perspectives, Ferrill and Hinman underscore why this is a faulty and ultimately poor framework for conceptualizing the value of design patents,” writes Forbes contributor Madeleine Key in a recent IPWatchdog.
“While Samsung was forced to pay Apple more than $500 million for infringing its design patents [reduced from $1 billion], damages awards are not typically what the owners of design patents seek. Forcing a competitor to stop using the design — to ‘design around’ — is the point.”
Functionality is Critical
Brian Hinman: “I dealt a lot with design at Phillips. We won a ton of design awards for a lot of the healthcare products that Phillips, [as a business,] really has morphed into. You’re correct, they’ve sold off and divested everything in their consumer electronics. They still have a lot of consumer products, like the Sonicare toothbrush, which has a very unique design. You’ve got a lot of MRI machines, CAT scans, CT and all of the like — functional designs, right?
“In the healthcare environment, the functionality of [these] designs is critical. It’s critical to really differentiate those products because they have to meet specific safety and performance standards. That’s where the functionality comes in.”
Go here to hear the episode “The Mysteries of Design Patents – Preventing Abuse Before It Happens” on the platform of your choice or on IPWatchdog.
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According to the World Intellectual Property Organization, China filed 798,112 design patent applications in 2022 — 60% more than the those of the EUIPO, Turkey, UK, Republic of Korea, U.S., Germany, Japan, France and Italy combined. (See graph below.)
Image source: USPTO via Wilson Legal Group – Crocs v. ITC, 598 F.3d 1294 (Fed. Cir. 2010); CIPU
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