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Design patents as a tool for business strategy: lessons from Apple v Samsung
Published By World Trademark Review January 07, 2019

The long-running face-off between Apple and Samsung over the design elements of their phone products offers a number of key takeaways for rights holders

Design patents have been a part of US patent law since 1842. Yet for much of this time, they have occupied a side role relative to utility patents – both in their number and in the respect (or lack thereof) accorded to them. However, in the past decade, design patents have received significantly more attention, as savvy businesses look to them to protect valuable innovations. Given that most consumer product companies spend vast resources on industrial design in order to create a particular look for a product or line of products, it is only appropriate that they also invest in protecting those looks – at least for products with a longer shelf life. Indeed, design patents can be instrumental to establishing and protecting the market share of a product’s appearance.

Design patent infringement

Not all aspects of a patented design need to be present in an accused product for there to be an infringement. The test for determining whether an infringement has occurred requires the courts to consider the accused product and the patented design and determine whether the two look substantially similar. More specifically, infringement occurs if an ordinary consumer would mistake the accused product for the patented design in the context of the relevant prior art. Under this rule, an ‘ordinary consumer’ is an individual who is aware of the relevant prior art, rather than a wholly uninformed person. Although design patents do not protect the functional aspects of a design, a design patent claim may involve both functional and non-functional elements. Provided that the primary design or appearance is not dictated by its functional aspects, the design claim is valid even if certain claimed elements have functional purposes. Indeed, the courts may exclude the functional aspects of a design patent from consideration during an infringement analysis. In addition, special damages provisions apply under 35 USC §289, which authorises a penalty of the infringer’s total profits.

Over the past seven years, design patents have taken centre stage in a series of Apple v Samsung lawsuits – a compressed timeline for which is set out...

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Siddhi S Shah, a summer associate from George Washington University Law School, assisted in the preparation of this article.

This article first appeared in World Trademark Review issue 76, published by Globe Business Media Group – IP Division. To view the issue in full, please go to www.WorldTrademarkReview.com.