3Qs: What the Apple-Samsung ruling means for design patents

(Phys.org)—A jury in San Jose, Calif., recently found that Sam­sung Elec­tronics infringed on Apple's patents, awarding the iPod man­u­fac­turer more than $1 bil­lion in dam­ages. We asked Susan Bar­bieri Mont­gomery, exec­u­tive pro­fessor of law and busi­ness at North­eastern Uni­ver­sity, to expound on a lesser-​​known form of intel­lec­tual prop­erty (IP): design-​​patent pro­tec­tion. Here, she dis­cusses Apple's design patent on the phys­ical design of the iPad (U.S. Patent No. D618,677) and whether the role of this patent will inspire a surge in appli­ca­tions for U.S. design-​​patent protection.

What is the difference between a utility patent and a design patent? What is the scope of design-patent protection?

Utility patents are what most people think of as "patents," cov­ering new and useful devices, processes and mate­rials. Design patents, on the other hand, cover the new, orig­inal, orna­mental design of an article of man­u­fac­ture. For a par­tic­ular device, one or more utility patents may cover the useful, func­tional fea­tures and the method of using the device, while a design patent covers the way it looks. While utility patents often have numerous, lengthy, pre­cisely worded claims, each design patent has a single claim, which is shown in one or more drawings.

In this par­tic­ular case, Apple accused Sam­sung of infringing a variety of IP assets: three utility patents and four design patents, as well as reg­is­tered and unreg­is­tered trade dress. In reaching its ver­dict, the jury was instructed to sep­a­rately deter­mine whether and which of Apple's IP assets was infringed by each of the numerous smart­phones and tablet com­puters iden­ti­fied in Apple's complaint.

For the design patents, the jury was told it must find infringe­ment if "the overall appear­ance of an accused Sam­sung design is sub­stan­tially the same as the overall appear­ance of the claimed Apple design patent." The jury's finding that the thin, rec­tan­gular, rounded-​​corners design of var­ious Sam­sung Galaxy devices infringed the '677 design patent is a stun­ning example of the poten­tial power and scope of design-​​patent protection.

How common are design patents? Are they becoming more popular in traditionally technical industries such as that of electronic devices?

Since it "only" covers orna­mental design, a design patent has long been viewed by some as the poor stepsi­b­ling of the more-​​championed utility patent. Invest­ment in design patents, how­ever, has increased sig­nif­i­cantly over the past 30 years, growing steadily from an annual rate of only 3,942 design patents issued by the U.S. Patent and Trade­mark Office in 1980 to 21,356 in 2011. The rate of growth has varied by industry, decreasing in some, remaining fairly stable in cer­tain sec­tors (such as auto­mo­tive), and enjoying spikes of interest in footwear and other con­sumer goods sec­tors. Since the late 1990s, appli­ca­tions sub­mitted by com­puting, mobile and other electronic-​​device com­pa­nies have fueled much of the growth. Elec­tronic device com­pa­nies now dom­i­nate the upper ranks of com­pa­nies obtaining the most design patents over the years 1987 – 2011, as reported by the U.S. Patent and Trade­mark Office. Apple is 21st on that list, with a period total of 722 design patents—while Sam­sung tops the list, with 3,008, having accel­er­ated its annual acqui­si­tion rate from a mere four in 1998 to 328 in 2011.

Do actions speak louder than words? Com­pare Samsung's amassing of this unprece­dented design-​​patent armory to its press release slam­ming last week's ver­dict as an "unfor­tu­nate" example of design-​​patent law "manip­u­lated to give one com­pany a monopoly over rec­tan­gles with rounded corners."

Will the decision in this case, particularly in regard to Apple's use of a design patent, cause companies to consider including design patents in their IP strategy?

The cov­erage of last month's more than $1 bil­lion award (which may increase as a results of a finding that Samsung's infringe­ment was willful), cou­pled with the clamor over Apple having a "monopoly over rec­tan­gles with rounded cor­ners," has put design-​​patent pro­tec­tion in the spot­light. Com­pa­nies that pre­vi­ously over­looked or dis­counted design-​​patent pro­tec­tion as "only" pro­tecting how some­thing looks, are likely to recon­sider and place new value on the role of design-​​patent pro­tec­tion in their IP asset port­fo­lios and strate­gies. In addi­tion to the idol­iza­tion of its design ethos and acumen in the market-​​transforming wake of the iPad, the suc­cess of Apple's com­pre­hen­sive IP strategy demon­strated by the ver­dict against Sam­sung—including the inte­gral role of design patents—is inspi­ra­tion for others to adopt sim­ilar approaches to pro­tect and posi­tion their products.