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Design Patents – Don’t Overlook Their Potential
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Design Patents are often disparaged as offering extremely limited protection. But often that is not the case. The article below from the USPTO explains the case of Crocs, the foam shoes with holes that are sold and worn everywhere. Crocs won an infringement lawsuit based on a design patent which found that the a design patent can be infringed upon even if there are some design differenced. The key element in the case was the ordinary observer test, which is can an ordinary person distinguish the differences between the products.
Design patents are much less expensive than utility patents, with USPTO fees and attorney or agent fees, about 25% less. Additionally it is much easier, and faster to get a design patent over a utility patent. So don’t dismiss automatically a design patent. Discuss if it might be applicable for your product. Discuss this with your patent professional, or contact Don Debelak at dondebelak@gmail.com or 612-414-4118.
The following is an 2010 excerpt from the Blog of the Director of the USPTO at the time.
Good News for Design Patent Holders
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
Now here’s some good news for patent holders, and especially for design patent holders. Last week, the CAFC reversed an ITC decision holding that none of the interveners infringed U.S. Patent No. D517,789. Crocs, Inc. v. International Trade Comm’n, __ F.3d __ (Fed. Cir. 2010)(Rader, J.). The ‘789 design patent is for the familiar Crocs foam footwear.
Judge Rader, writing for the court, drove home the point that minor differences between a patented design and an accused article’s design cannot prevent a finding of infringement. The court again cautioned trial courts about excessive reliance on detailed verbal description of design claims, and referenced the Manual of Patent Examining Procedure for the proposition that “the illustration in the drawing views is its own best description.” The court pointed out that the verbal claim construction had focused on particular features of the claimed design, and hence had led the Commission away from considering the claimed design as a whole. The court then reiterated that in applying the ordinary observer test for infringement recently clarified in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the emphasis must be on the design as a whole. By performing side-by-side comparisons of the drawings of the ‘789 patent design and the accused products, the court concluded that “an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused products are the same as the patented design.” This decision raises the value of innovation protected by patents and shows that the Federal Circuit is behind IP owners who put their confidence in our patent system.
Design patent protection is increasingly viewed as strategically important for innovators small and large because it is an efficient and cost effective way to give an owner the right to prevent others from making, using, or selling a product that so resembles the patented product. In the last five years, the USPTO processed more than 25,000 design patent applications per year.