Philippe Signore was recently interviewed on Oblon, Spivak's Patents Post Grant Law Blog. The text of that interview is below.

Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features.  Design patent are defined in scope by the content of the drawings  as opposed to the words of a set of claims. Further, design patents are accorded a patent term of 14 years from issue, as opposed to 20 years from filing.

The USPTO issues about 25,000 design patents each year.  Design patents cover a broad range of products, as evidenced by the diversity in the companies investing in this form of IP.  For example, consumer electronic companies, such as Sony,  Motorola, Toshiba,  and Apple rely on design patents to protect the stylish appearance of their latest gadgets  Likewise, athletic product companies such as Nike and Under Armour cover the aesthetic appeal of their footwear and garments, which can be a primary selling point, using design patents.  Auto-makers, such as Ford, Honda and Toyota, obtain design patents to protect their  components from being replaced with low quality imitations; even software companies, such as Microsoft and Google, seek design patent protection to cover their latest computer icons, and GUIs’. 

With fewer than 10 design patent reexaminations conducted by the USPTO, on average, in any given year, explored the underlying issues with Oblon Spivaks’s design patent guru Philippe Signore. : Philippe, why do you think the frequency of design patent reexamination is so low?

Philippe:  Historically, design patent litigation has been much less common than litigation involving utility patents.  With so much of the recent surge in reexamination of utility patents being linked to concurrent litigation, it does not surprise me that design patent reexaminations are relatively infrequent.  That is not to say that design patents are less valuable than utility patents, just that design patents have not been effective barriers on their own for preventing entry to an entire market of products, but instead, have created effective barriers to copying a particular product aesthetic.  Can you expand a bit on that last point, what do you mean by “not effective barriers?”

Philippe:  For example, if you want to manufacture running shoes, an issued design patent may not stop you from selling a number of running shoes in the marketplace; instead the issued design patent may stop you from copying the particular design shown in the issued design patent.  Thus, while a utility patent could prevent a competitor from entering a market altogether (assuming someone owned the patent on making shoes) a design patent may only prevent a competitor from copying a particular design for an article of manufacture.  

Getting back to the popularity of reexamination proceedings, design patents have not been conducive to patent troll use due to the low likelihood that a single design would apply to an entire industry.  Thus, there are very fewer “David vs. Goliath” style situations in which the risk/reward ratio favors such a design patent assertion.  Historically, design patent disputes have been between true competitors, and litigation between competitors is not an effective business model, but a tool of last resort. You keep saying “historically,” do you see design patent reexamination becoming more common in the future? 

Philippe:  Yes, I definitely expect a modest increase in design patent reexamination proceedings, for a few reasons. 

Companies all over the World are increasingly realizing that product sales are not only driven by what products do, but also by how products look.  In that sense, utility patents and design patents provide a potent combination.  Companies invest in utility patents to protect the functionality of their products, and at the same time they seek design patent protection to cover the shape and configuration of their products.  Looking at the number of issued design patents each year, we see an upward trend reflecting this increase in popularity – although 2009 was an exception to this trend for the US.  With the number of issued design patents increasing, I expect an increase in the number of disputes involving design patents in the future. 

Another recent trend that may affect the number of design patent reexamination is globalization, which brings a greater number of imported goods into the US made in countries with lower manufacturing costs.  These imported goods are often copies of existing products that were developed by more established companies with large R&D programs.  As the established companies increasingly want to prevent price erosion and protect their share of the US market, they will increasingly turn to their design patents, which is a great weapon to fight against the importation of copied products.  In that respect, Ford has been successful at the ITC in enforcing its design patents against importers of replacement parts for its vehicles.  In district court, design patent owners have the additional option of seeking an infringer’s total profits under 35 U.S.C.§ 289, an option not available to the owner of a utility patent.  As can be appreciated, this option can strike fear into a manufacturer who pockets greater profits because of its lower costs.  I predict that these importing companies will increasingly turn to reexaminations, which is an attractive, low cost, risk management tool. What are some features of design patents that render their reexamination different from that of a utility patent 

Philippe:  Ex parte design patent reexaminations are found invalid (i.e., all claims cancelled) in roughly 50% of cases, which is significantly higher success rate than for utility patents.  While this statistic is based on a relatively smaller sample, I believe it still suggests a relatively high chance of success for the third party requester.  Unlike a utility patent reexamination, “what you see is what you get” in a design patent, the claim covers the design shown in the drawing figure(s); assuming the prior art shows the ornamental features, it may be difficult to amend around it.  

Another potential advantage for the design patent reexamination requester is that although patent reexamination generally excludes offers for sale and public use evidence, in design cases this distinction is often times irrelevant. This is because an offer for sale often includes an image (especially in arts where design protection is valued), thereby qualifying the disclosure as a printed publication showing the claimed design.[1]  For example, see the recently granted Reexamination Control No. 90/010/699 (Third party used their own catalog images as basis for SNQ).  In this design patent reexamination, the Patent Holder will be forced to discuss the differences between the patented design and those of the third part requester (i.e., competitor).  Thus, even if not found to be unpatentable by the USPTO, the Patent Holder will almost certainly be creating non-infringement defenses for the requester in the design patent reexamination.

Of course, to prepare a proper request for design patent reexamination or to successfully navigate a patent through design patent reexamination, ornamental obviousness must be analyzed and understood.  Design patent obviousness analysis based on the design taken as a whole as viewed through the eyes of the ordinary observer is markedly different than the KSR style analysis that goes on in the utility world based on structural and functional analysis.  Thus, obtaining skilled counsel is absolutely crucial for successfully implementing a design patent reexamination strategy.

PPG.comThanks Philippe, if our readers desire more information on design patents do you have any helpful links?

Philippe: Sure, in addition to USPTO resources on design patents, our Industrial Design Practice Group Page provides an overview of the scope of available protections, and my bio includes links to some further articles of mine.