Design Patent Strategy

Highlighting the important of design patents to the Outdoor industry, a group of outdoor gear companies filed an amicus brief with the Supreme Court in the Apple v. Samsung battle. The companies include Deckers, Oakley, Thule, and others.

The issue before the Court relates to damages. The statute provides strong patent damages for the patentee in terms of the total profit rule. This is different from (and strong than) utility patent damages.

The brief explains the importance of design patents, arguing that:

Without effective design protection, the visually striking products of innovative companies could be copied with impunity. The critical nature of design patents It is the total profit remedy of Section 289 which gives teeth to design patents by bringing design predators – that have no investment in design innovation, research and marketing – to the negotiating table to settle disputes. This is especially critical for small businesses which do not have the resources of large, big box retailers whose business model is “first-to-be-second” with respect to popular products.

A key point in the brief is that design patents can be drafted to have different scopes. For example, a design patent can claim the entire design for a product, or only a particular design feature of the product. The brief explains the different effects of these approaches in terms of a competitor attempting to design around the patents:

[A competitor] may attempt to avoid infringement by making slight changes in the product’s major visual portions. They might well avoid the scope of a design patent that covers the entire product, but they might have more difficulty avoiding the scope of a design patent that
covers only the major visual portions of the product.

This statement points out a major aspect of the strategy in protecting products with design patents. Care should be taken in filing design patents on your products to make sure that there is a clear plan for protecting the right scope of the design, whether it is the entire product, portions of the product, or combinations thereof.