Billion Dollar Baby – Apple and Design Patents

[author: Martha Engel] 

It’s not too often that the media takes note of a patent dispute, but the Apple v. Samsung dispute has certainly gotten a lot of news attention.  Probably because almost 40% of Americans have a phone made by one or the other in their pockets.   After a tumultuous trial, on Friday, just two and a half days after closing arguments, the verdict came in from the California jury.  The jury found in favor of Apple and awarded the company over $1 billion in damages.

Many people think of their smartphones as just that – “smart,” technologically innovative gadgetry.  But what’s interesting about Apple v. Samsung is that 4 out of the 7 patents asserted by Apple covered design, not technological guts.   Figures from two of those design patents, D593087 and D618677  are shown below:

Here are some reasons why you may want to consider adding design patents to your arsenal of intellectual property protection:

• A design patent application is cheaper to file and maintain compared to its utility counterpart.   For a large entity like Apple (>500 employees), the US government fees to file the application and maintain the issued patent are $1,520 for a design patent and $11,700 for a utility patent.
• About 80% of design patent applications result in an issued patent (often without a single rejection from the Patent Office) compared with about 40% of utility patent applications.  This also makes them cheaper than utility patents.
• You get an issued patent quicker.  The average pendency for a design patent in the Patent Office is about 15 months versus 33.7 months for a utility patent.
• To prove infringement, a company like Apple does not need to show a likelihood-of-confusion between its products and an alleged infringer’s product.  In fact, the patent owner does not need to practice his invention at all.  The patent right is a right to exclude others from doing something.  You need only show that the other party makes, uses, offers to sell, or sells a product that embodies your claimed inventive design.

Now recall that, in patent law, prior disclosures may present a bar to patentability – so it’s important to consider any patent filing strategy before disclosing your design to a third party or to the public.