Design Patents
6 Reasons to Consider Design Patent Protection
You're likely well versed in the value of utility patents. But did you know that a design patent for your product can be an equally important component of your intellectual property portfolio?
Design Patents vs. Utility Patents
A utility patent protects the structural and functional aspects of a new or improved product or system. A design patent covers the unique appearance of an item.
Foreign Design Patent Protection
A US design or utility patent gives its owner the right to exclude others from commercializing the patented product only in the United States. As a result, foreign patents must be obtained to provide coverage in non-domestic markets.
Protecting User Interfaces and Mobile Apps with Design Patents
Many questions have been raised about the patentability of software in the wake of the Alice Corp. decision by the Supreme Court.
ALERTS & ARTICLES
When is a Name More Than Just a Name?
July 13, 2021: The Court of Appeals for the Federal Circuit was tasked with determining whether a design patent with a claim for a “pattern for a chair” and drawings showing a pattern but no chair could be infringed by baskets which have the same pattern. In Curver Luxembourg, SARL v. Home Expressions Inc. (938 F.3d 1334, 2019), a case of first impression, the Federal Circuit provided new guidance regarding the scope of a design patent.
Brexit and European Design Registration Protection
March 30, 2021: With the United Kingdom’s departure from the European Union, European Community Design Registrations will no longer be enforceable in the UK. What does this mean for your design registration portfolio?
Changes Coming to Chinese Design Patent Law
February 17, 2021: As of June 1, 2021, designers and companies will have more flexibility in obtaining design patent protection in China. Under the new law, a design patent claim may include only a portion of a product instead of including the entire product, as is currently required.
Changes May be Coming to Australian Design Right Laws
February 16, 2021: Proposed amendments to the Australian design right laws are currently before Parliament for consideration and, if accepted, may provide more flexibility for designers and companies seeking design registrations and for companies defending against an infringement action in Australia.
John Strand Quoted by Bloomberg Law on Utilizing Design Patents to Fight Overseas Knockoffs
November 16, 2020: John Strand was quoted by Bloomberg Law in an article titled “Companies Turn to Design Patents to Fight Overseas Knockoffs.”
Protecting the Look of a Product: Design Patents vs. Trade Dress
February 1, 2019: When considering intellectual property protection, businesses often overlook the value of design patents and trade dress rights. Products may have ornamentation and/or visual designs that could be protected to prevent copying. Understanding the differences between design patents and trade dress rights may be beneficial to an engineer or other product designer involved with designing a product.
How to Protect Your Products in a Competitive Market
May 23, 2019: Startups thrive on innovation and disruption, finding new ways to tackle challenges and devise solutions. However, many new businesses don’t have a strong understanding of how to safeguard their innovations in highly competitive markets. This is where design patents and trade dress rights can play an important role.
In Re Maatita’s Guidance for Figures in Design Patent Applications
August 23, 2018: The Federal Circuit held in In Re Maatita that a single plan-view drawing in a design patent application for a shoe bottom sufficiently enabled the claimed design, and the lack of additional drawings did not result in an indefinite claim. This holding could help applicants with pending design applications that do not show the complete three-dimensional appearance of certain features.
$533 Million Apple v. Samsung Verdict Highlights Importance of Design Patents
May 30, 2018: In a long-running smartphone case that made headlines when it reached the Supreme Court in 2016, a California jury decided that Samsung owes Apple $533 million for infringing three design patents, while awarding only $5 million for infringing two of Apple’s utility patents. The verdict hinges on a key distinction between design patents and utility patents: owners of design patents can recover the infringer’s total profits for infringement.
Stop the Copycats: Reasons for Choosing Design Patent Protection
January 3, 2017: In this term, in the U.S. Supreme Court, Apple and Samsung argued a case that brings to the forefront a lesser-known type of intellectual-property (IP) protection: design patents. While most companies are well-versed in the value of utility patents, many have yet to discover that design patents can be an equally important component of their IP portfolio. Design patents can help prevent knockoffs, obtain faster patent protection, save money, and more.
In Design Patents, A Picture May be Worth a Thousand Words
April 28, 2016: The PTAB has been tough on design patent holders, invalidating all design patents to reach final written decision in an IPR. For patent owners looking to beat these odds, one way to overcome the prior art at issue would be to prove a valid priority claim to secure an earlier effective filing date. For a design patent, the priority claim could be to an earlier-filed, co-pending design application, or even a utility application.
Using Patents To Secure Repeat Customers
September 1, 2015: The aftermarket for consumable products can be significant and is oftentimes more profitable than the sales of the corresponding base products. Consumables (e.g., disposable printer cartridges, razor cartridges, single-serving coffee pods and cleaning pads) are extremely valuable because they provide a high-margin, continuous source of revenue, as compared to a nonconsumable of which a consumer only purchases one. The high profit margins for such consumables, however, create an incentive for generic imitations from competitors.
Top Issues Every Consumer Products Company Should Consider
April 11, 2013: Today’s consumer products companies have a wealth of competitive issues to face in managing their businesses in a global economy. Given these challenges, it is not surprising that addressing issues surrounding patent protection of their product lines may take a back seat to meeting manufacturing and sales goals. But for key products and product lines, ignoring or even putting off the patent process may spell disaster down the road.
DESIGN PATENT TEAM
Eric Amundsen
Shareholder, Mechanical Technologies Practice
Eric Amundsen counsels clients on strategic patent portfolio development, clearance studies, and patent validity and infringement opinions. With over 15 years of experience in the patent field, he has worked with a wide variety of technologies, including manufacturing and testing equipment, sporting goods, medical devices, consumer products, furniture, software, and business methods.
Andrea Merin
Associate, Mechanical Technologies Practice
Andrea Merin focuses her practice on utility and design patent preparation and prosecution as well as opinion work. She counsels budding startups, multinational corporations and leading academic institutions to develop and implement intellectual property strategies aligned with their business goals.
Bob Hunt
Shareholder, Mechanical Technologies Practice
Bob Hunt provides full service IP counseling, including patent preparation and prosecution, patentability and clearance studies, infringement and validity opinions, license agreements and negotiations, and offensive and defensive consulting in matters involving patent litigation.
Jason Honeyman
Shareholder, Mechanical Technologies Practice
Jason Honeyman has practiced exclusively in the IP space for over 30 years, providing strategic, business-focused counseling to clients ranging from startups to industry leading companies and top tier academic institutions. Jason develops strong and lasting client relationships, with several mainstay clients now in their second and even third decade with the firm.
Jen Wang
Shareholder, Mechanical Technologies Practice
Jennifer Wang focuses her practice on patent preparation and prosecution, opinion work, diligence, patent litigation, and post-grant proceedings. She is experienced in US and foreign patent prosecution, utility and design patent prosecution, freedom to-operate, landscape and patentability studies, IP due diligence, and inter partes review (IPR).
Neil Ferraro
Chair, Mechanical Technologies Practice
Neil Ferraro chairs the firm's Mechanical Technologies Group. Neil counsels clients in all areas of intellectual property, with particular emphasis on domestic and international patent procurement, clearance to market analyses, acquisitions, diligence, and licensing matters.
Mike Attisha, PhD
Associate, Electrical & Computer Technologies Practice
Mike Attisha counsels clients in a wide range of technology areas, including electronics, industrial automation, Internet of Things (IoT), robotics, cybersecurity, autonomous devices, artificial intelligence, machine learning, additive fabrication (3D printing), display technologies (LCD, OLED, electrophoretic), software, semiconductors, optics, medical devices, electronic music, automated hardware testing and signal processing.
Matt Grady
Shareholder, Electrical & Computer Technologies Practice
Matthew Grady brings significant industry experience in computer sciences to his practice and counsels clients large and small, tailoring individualized solutions that balance business needs with the development of intellectual property portfolios. He guides clients through the development of effective intellectual property-building strategies incorporating utility patents, design patents, trademarks, copyrights and trade secret forms of protection.
Doug Wolf
Chair, Trademark & Copyright Practice
Doug Wolf chairs the firm's Trademark & Copyright Practice and focuses primarily in the areas of trademark prosecution and litigation, patent portfolio management, infringement and patentability analysis, licensing, and internet issues. He also provides due diligence and acquisition analysis to venture groups on target companies and technologies. Doug splits his time between the firm’s offices in Boston and New York.
John Welch
COUNSEL, TRADEMARK & COPYRIGHT PRACTICE
John Welch has represented clients in scores of patent, trademark, copyright, unfair competition and domain name lawsuits across the country, and has handled hundreds of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office. He has obtained numerous utility and design patents for clients in a variety of industries, such as lighting fixtures, electrical instrumentation, ceramic candle holders, food processing machinery and kitchen utensils.
Tonia Sayour
Counsel, Trademark & Copyright Practice
Tonia Sayour has nearly two decades of experience counseling clients in all areas of intellectual property law, with a focus on patents, trademarks and copyrights. Her clients span from startups to nationally known companies across a multitude of industries including consumer products, food and beverage, and mechanical devices. Having litigated over fifty cases in jurisdictions around the US, representing both plaintiffs and defendants, Tonia also focuses her practice on litigation.
Robert Maldonado
Counsel, Trademark & Copyright Practice
Robert Maldonado focuses his practice on intellectual property litigation, including patent, trademark, copyright, false advertising and unfair competition matters in federal court. He has extensive litigation experience at both the trial court and appellate court levels, as well as before the Patent and Trial Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB).
John Strand
Shareholder, Trademark & Copyright Practice
John Strand focuses his practice on the enforcement and defense of intellectual property rights in patents, trademarks and domain names. He has assisted clients in a number of industries including airport and border security and detection services, pharmaceuticals, medical devices, internet-based sales, yacht brokerage, telematics, home warranty, and snowboard design. He has applied his training to all aspects of litigation from inception through appeal, including as “first chair” at trial.
Michael Albert
Shareholder, Litigation Practice
Michael Albert focuses his practice on patent litigation. He has trial experience before federal and state courts across the US and has prevailed in appellate practice before the US Courts of Appeal for the First and Federal Circuits and the Massachusetts Supreme Judicial Court. Michael served as the chair of the Litigation Group for more than 15 years.