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Don’t Forget About Design Patents!

IP and patent law books

When thinking about “patents,” inventors and organizations too often overlook the lesser known siblings of the “regular utility” patent …namely “Design” patents and “Plant” patents.  (I won’t discuss the latter as they are very specific to certain types of plants, but rather will focus on the former.) In this first of several related articles, I review the range of design patents relevant to product manufacturers.  In subsequent articles I’ll discuss how to best seek design patent protection both in the US as well as internationally.  Hopefully these articles will prompt consideration when seeking patent protection in the future, so that Design patents are not overlooked when contemplating filings for a regular utility patent.

It’s been my experience that too often inventors and organizations overlook the benefits of concurrently seeking protection of novel designs along with regular utility patents when considering patent protection.   Perhaps this is due to the fact that they may not be aware of the benefits which such design patents can bring in conjunction with or in place of one or more related “regular utility” patents.  But current consumer trends warrant their serious consideration particularly when a patented article has a configuration and appearance that is purposely made to differentiate it from competitors’ products in the marketplace.

So, what’s a U.S. Design patent?  The USPTO provides the following summary definition:

“A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.”

This is particularly helpful as at the outset it defines the scope of what qualifies under US Patent Law (see 35 U.S. Code §171) for design protection: a “configuration or shape of an article” and/or “surface ornamentation.”    While this scope is narrower than the potential scope of a “regular utility” patent which can be obtained for anything that would meet the statutory definition of “… any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” (see 35 U.S.C. § 101. But when the subject of a patent is directed to a tangible three-dimensional article, its overall design and/or surface ornamentation may be protected, which makes a design patent of particular interest in all manner of products.

One need only look at certain consumer products or product packaging to note that certain designs remain unique to particular company, as competitors are dissuaded from making similarly designed products.  For example, some recently granted US Design patents to consumer products include:  US D800,965 for the design of parts of a hair clipper housing [Wahl Corp.];  US D798,514 for a Vacuum Cleaner [Dyson Technology Limited]; US D783,142 for a Fan [Dyson Technology Limited]; and, US D803,133 for a Vehicle Wheel [Ford Global Technologies, LLC].  All of the foregoing are directed to consumer products, viz., are the types of product a typical consumer would see at a retail store or on an online marketplace and would necessarily be able to view before considering a purchase.  So, a product’s configuration here plays an important role in differentiating among similar products and induce the consumer to purchase a particular article instead of others available in the marketplace.  So when an effort is made to produce a consumer product with a unique design, a Design patent may provide valuable protection from third parties seeking to copy the design.

The scope of protection may indeed be enhanced when parts of the drawings within the Design patent include “broken lines;” as they provide an expanded scope of  coverage. Such lines are shown in each of US D800,965, US D798,514 and US D783,142.  In US Design patents, the patent protection extends to the entire design of an article, or the entirety of surface ornamentation when the drawing is depicted with solid lines.  Savvy applicants frequently illustrate parts of their design in “broken lines,” which are not interpreted in limiting the scope of the design, but only those parts shown in solid lines are considered to be within the scope of the claim.  What’s the advantage?  Simply put, a broader scope of protection is created, as a third party seeking to copy or make a too-similar version of what is encompassed by the US Design patent doesn’t have to copy or mimic the entireclaimed article but only that part in solid black lines in order to become a potential infringer.

Another important benefit of obtaining a Design patent relates to a certain type of consumer product that is usually provided as a replaceable component, or “refill,” for a larger apparatus that is also sold by the same manufacturer.  As is known in many industries, the repeated sales of such refills offsets the costs incurred by the manufacturer who may have initially provided the associated larger apparatus at a minimal profit.  Some recently granted US Design patents include: US D799,979 for a Refill Bottle and Wick [Reckitt Benckiser (Brands) Ltd.]; US D743,806 for Combined Sprayer and Refill Bottles [S.C. Johnson & Son, Inc.]; US D803,311 for a Toner Cartridge [Brother Industries, Ltd.]; and US D798,456 for Dental Material Dispenser Cartridge and Tip [Dentsply Sirona, Inc.]. Obtaining a Design patent for a refill ensures that no “counterfeit” refills will be sold by third parties, possibly compromising the proper functioning of the combined apparatus and refill.  This way the reputation of the manufacturer of both the refill and the larger apparatus may be ensured, as the quality and reliable functioning of a refill with the larger apparatus is protected.  Such is not the case when a third-party refill is used with the larger apparatus as the manufacturer cannot control the quality of the refill or its operation.

US Design patents also have their place in which might be considered non-consumer articles as well. By this I mean articles which may be relevant to industrial or manufacturing customers, and especially to components or parts of a larger device.  For example some recently granted US Design patents for such non-consumer articles include: US D714,216 for a Nozzle Chest of a Steam Turbine [Triveni Turbine Limited]; US D721,040 for a Receptacle Connector [KYOCERA Connector Products Corporation]; US D752,756 [Caterpillar, Inc.]; for a Tip for a Ground Engaging Machine Implement; and US D803,902 for a Dental Prosthesis [Implant Direct Sybron International, LLC].  So manufacturers should not overlook seeking design protection for articles having a particular configuration in the non-consumer marketplace.  Manufacturers of component parts, and in particular replacement or spare parts used in the manufacture or repair of larger devices or vehicles, should pay particular attention to Design patents. So should medical equipment suppliers, particularly those providing implantable prosthetics, or compositions used in medical procedures.  Having Design patent protection may be useful against a third-party seeking to manufacture component or repair parts which would be unauthorized or “counterfeit.” Such parts might be sub-standard in quality and/or function, possibly jeopardizing the operation of the larger device or vehicle in which it is used.  Having the ability to stop the importation and sale of unauthorized or “counterfeit” components or repair parts help to maintain the reputation of the manufacturer in the non-consumer marketplace.

So, if a Design patent extends only to “configuration or shape of an article” and/or “surface ornamentation”… what is its real value?   This excellent question is sometimes a bit difficult to answer.  Many times, the existence of third party patents may act to block a competitor from releasing a similarly configured product to the marketplace.  But such information is never made public, so it difficult to gauge, although such a scenario is surely not uncommon.  Having one or more relevant Design patents surely provides more protection than having none.

Not infrequently lawsuits are filed over Design patents and may be bitterly contested.   A current lawsuit initiated in 2011 by Apple against Samsung having at its heart Apple’s design patents directed to its iPhone product demonstrates the potential value of design patents in the marketplace.  In this lawsuit a jury initially found in favor of Apple and awarded damages of $399,000,000 for design patent infringement.  Samsung appealed the decision to the Court of Appeals to the Federal Circuit which affirmed the damages award (Apple Inc. v. Samsung Electronics Co., 786 F.3d 983 (Fed. Cir. 2015)). Subsequently  the Supreme Court granted certiorari and reversed the Appeals Court’s decision concerning the award for damages (Samsung Elecs. Co. v. Apple, Inc., 137 S. Ct. 429, 434 (2016)), now on remand back to the Federal District Court for the Northern District of California, a new trial has been ordered.

I hope that this initial article regarding Design patents is helpful in expanding appreciation of their role in the consumer and non-consumer marketplaces.  In an upcoming article I’ll discuss the requirements for US design patents and how these are best prepared to obtain the best possible coverage, and discuss some of their benefits over regular utility patents, including lower costs and faster processing at the US Patent and Trademark Office.   Further articles will discuss seeking protection for designs globally, and the benefits in doing so.

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