Design Patents

Your product designs are unique, reflect dedicated hard work and your company’s brand identity, and can critically impact market acceptance and success. When leveraged effectively, design patents are one way to protect your investment, and can complement utility protection, or stand alone when utility protection is not available.
 
Working closely with our clients, we create a comprehensive strategy to protect a product’s design, taking into consideration the aspects of the design that are the most commercially valuable, distinctive, easily recognized, and which may be desirable for a competitor to copy. We’ve helped clients secure design patent protection for their products in the US and internationally, and have helped clients navigate and resolve IP disputes involving design patents.
 

GUIDES

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

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

We understand that design patents are just one tool in your IP toolbox. Each member of our design patent team has a separate primary practice group affiliation, which means we can tailor your IP strategy to fit your overall portfolio needs. 
 

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.