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“The Case for Design Patents in Manufacturing and Industrial Technologies”

Inside Counsel By Nicole A. Bashor

Outside of certain industries, design patents have been a source of confusion and general apathy. Historically, design patent filings have severely lagged behind their utility patent application counterparts, and the discrepancy is even more evident when fields of technology or industry are examined. For example, a brief search in the U.S. Patent Office revealed very few (fewer than 50) design patents have been issued to “distillation” related technology. Similar searches of other industrial areas yielded similar results including “conveyor” (less than 200), “forklift” (less than 100), and “heat exchanger” (less than 150). Similar searches reveal the number of issued design patents all time in the United States was generally under 1,000 for many industrial related technologies. In contrast, industries having products with a known ornamental focus had a significant number of issued design patents. For example, design patents related to “shoes” (more than 7,400), “containers” (more than 13,900), and “flashlights” (more than 1,400) all extended over the 1,000 mark, and in many instances, over the 5,000 mark. So why the discrepancy?

Some industries are natural fits for design patents, including consumer product industries in which product design is cool and the sexiness of the look of a product is a very serious matter. You know the famous consumer product companies — the ones who hire marketing firms and/or have in-house design teams to make the product the most appealable to the consumer. On the other side of the spectrum, there are companies who manufacture a good product first and only secondarily consider the aesthetic aspects. These companies may sell to an end user based in a manufacturing facility, warehouse, chemical plant, or other non-public location in which function almost always prevails over form.

However, the time has come for design patents to move into the mainstream — not just in the world of sleek consumer product design, but in all areas including traditional manufacturing and industrial products . There are numerous reasons why design patents are going mainstream, including the most significant motivation: money. The highly publicized patent battle between Apple and Samsung involves a myriad of design patents that cover many aspects of Apple’s iPhone and iPad products. There is nothing like the carrot of hundreds of millions of dollars in patent infringement damages to make people pay attention to the potential design patent stick.

In light of the very public Apple/Samsung dispute, there are also a significant number of lessons to be learned. Some of the most obvious lessons relate to basic design patent application prosecution. For example, more particularized dashed lines, careful shading, and numerous embodiments are at the forefront of how the ornamental aspects of a product are protected. However, an area often ignored by manufacturing and industrial product companies with respect to design patents is the area of product clearance and freedom to operate. More specifically, industrial and manufacturing industries tend to focus clearance efforts on utility patents, as opposed to design patents. One reason for this may be the perceived low risk involved because of the relatively small number of issued design patents in these areas.

The small number of issued design patents are exactly why a manufacturing company may want to incorporate design patents into their own portfolio — there is a lot of "white space." This philosophy can be a boon to forward-thinking manufacturing companies in industries that tend not to do comprehensive clearance searching with respect to design patents.

One strategy may be to file design patent applications on one or more components of what would typically be thought of as a more industrial apparatus or machine. A significant advantage to this approach may be that a manufacturer can protect replacement parts or components for its machines via a design patent by blocking competitors from selling these components individually. Other clear advantages include the speed at which design patents are issued, the significantly lower cost to file and prosecute a design patent application, and quick and easy design patent application filing procedures abroad, which many times do not even involve a substantive examination of the design patent application.

Design patents can be utilized as one more tool in your patent portfolio arsenal against less savvy manufacturing and industrial peers. Many of these companies will continue to ignore design patents in clearance and freedom to operate searches, which leaves the door wide open for those companies who spend a little extra money to obtain design patents rather than only seeking traditional utility patent protection.