Expanding Design Patent Rights has Aesthetic Appeal to Industrial Designers

Expanding Design Patent Rights has Aesthetic Appeal to Industrial Designers

3/24/2009
By: John S. Artz A recent change in the law has expanded the scope of design patent protection. The Egyptian Goddess case has expanded design patent scope and with it enhanced the importance of design patents to industries where product appearance is extremely important. Industrial designers and their employers should reevaluate their use of this form of intellectual property or risk losing the exclusively such protection efforts. For well over two decades, courts have afforded design patents little to no scope. This led many product designers to conclude that this form of intellectual property provided limited rights and had only marginal value - particularly when compared to the broad protection provided by utility patents. In view of their limited reach, many product designers do not even consider design patents a viable way to protect a product's appearance. Others utilize design patents sparingly due to the narrow rights they provide. Clearly some designers utilize design patents to protect aesthetic features of their products, the majority of industrial designers do not utilize design patent protection to the fullest extent possible largely due to their historical treatment by the Courts. Broadly, design patents protect the novel look or appearance of a product and the monopoly they afford includes the exclusive right to use the patented design. Given the increasing emphasis on product marketing and branding, this can yield a significant competitive advantage as a product's appearance is in many instances as important - if not more important - than its function. Indeed, many product designers select and implement aesthetic features in an effort to attract consumers to their products. Manufacturers often employ distinctive appearances or looks for their products in an effort to grab a potential buyer's attention and entice them to purchase or use their products over those of a competitor. Successful product designs can thus result in increased revenue and profitability. The price commonly paid in the market place for such product success is that competitors are more likely to exploit the inventor's efforts by introducing similar looking products - if not exact replicas. In these instances, many design patent owners have attempted to enforce their design patents against these similar looking products. However, the majority of these companies have experienced little success without virtual identicality between the accused product and the patented design. This has rendered attempts to protect the appearance of a product relatively unsuccessful and turned product designers away from design patents as a viable way to protect their unique product appearances. Until recently, proof of design patent infringement required satisfaction of a two part test. First, the patent owner had to prove that the accused product was substantially the same as the patented design in the eyes of an ordinary observer ("the ordinary observer test"). Second, the patent owner had to prove that the accused design incorporated the novel features of the patented design that made it unique over prior designs ("the point of novelty test"). The second part of this test often proved difficult for design patent owners to satisfy. If a unique patented design had multiple points of novelty, an alleged infringer could often avoid infringement by arguing that its product only incorporated some, but not all, of the points of novelty. This was possible even if the products otherwise had the same overall appearance. This narrow treatment of design patents changed in the recent Egyptian Goddess v. Swisa, Inc(1) . decision handed down by the Federal Circuit Court of Appeals. The Egyptian Goddess case has eliminated the point of novelty test as a separate requirement for establishing design patent infringement. This case also eliminated any requirement for Courts to translate the design shown in the patent drawings into a verbal description as part of their analysis. These changes have significantly enhanced the protection afforded by design patents and simultaneously increased their value. The Egyptian Goddess case has the potential for wide reaching effects on industries where product appearance is extremely important (e.g. automotive, furniture, or household consumer products). While many companies promote the unique appearance and look of their products, they typically do not utilize all available efforts to protect any intellectual property that may exist in this look or appearance. Instead, they often only obtain utility patents, which protect the product's function - not its appearance. This inaction has the effect of discouraging innovation in product appearance while at the same time encouraging imitation by competitors of a designer's unique aesthetic creations. In view of the recent expansion of design patent rights, a significant opportunity exists for innovative companies to capitalize on investments in unique product designs. The ability to exclusively use and broadly protect a unique product design is a significant advantage. The ability to keep others from closely mimicking distinctive looks by way of a design patent appears to be more readily available and enforceable in view of this change in the law. Companies should thus reevaluate their intellectual property policies and ascertain whether utilization of design patents makes more sense. A company that currently owns design patents, may find that the value of these assets has significantly increased. A company that does not currently utilize this form of intellectual property to protect its new product appearances may find increased success by using design patents to protect these developments. _____________________________________________________________ (1). 545 F.3d 665 (Fed. Cir. 2008).
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