In the hierarchy of intellectual property rights, the big
three are utility patents, trademarks and copyrights. Design patents, which protect the appearance
of a useful article and not its functionality, have long been relegated to
second class citizen status in the IP world and are often dismissed as
providing scope that is too narrow or providing too little return on
investment. This perception is misplaced
and, as demonstrated by recent developments in the ongoing global IP war
between Apple and Samsung, design patents and industrial design registrations
should be viewed as a valuable additions to an innovator's intellectual property
portfolio.
In one ongoing case in Apple and Samsung’s global patent battle, Apple v. Samsung, 11-CV-1846,
N.D. Cal., Apple is asserting seven utility patents and six design patents
against several Samsung smartphones and tablets. Samsung has returned fire with seven of its
own utility patents. Following a
preliminary injunction motion, Federal Circuit appeal, and remand, Samsung is now
facing a preliminary injunction on its Galaxy Tab 10.1 tablet computer. The preliminary injunction is not based on
any of Apple’s utility patents. Instead,
it is based on one of Apple’s design patents that cover ornamental features of
its iPad design, D504,889, that is ultimately going to prevent Samsung from
selling its popular tablet computer, at least until the issues are finally
decided at trial.
When a company invests in industrial design, succeeds in
making a great looking product, and that look is important in the marketplace,
design patents can be a powerful tool to help protect that investment. Design patents are relatively inexpensive to
obtain and, if prosecuted thoughtfully, can be obtained with reasonable
scope. Enforcement is also less
expensive than utility patent litigation and can be quite effective. Its time for the poor design patent to get
the respect it deserves.
