Design patents’ discontents

What - if anything - are design patents for?

Confusion reigns in the world of design patents, says professor Rebecca Tushnet. Image credit: Getty
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Design patent law is becoming substantially more prominent, which is causing some problems—mainly because we still don’t have a great idea of what design patents are for.

“The current design patent system isn’t succeeding at what intellectual property law should set out to do: incentivize innovation and creativity.”
Design patents aren’t the same as utility patents (though they’re lumped together in much of the patent statute), and they aren’t the same as copyrights (though arguably they are closer to copyrights than to utility patents), and they aren’t the same as trademarks (though infringement cases often speak of confusing similarity).

Design patents are not supposed to cover functional designs—designs that serve a purpose in making the article more useful—but what “functionality” means is disconnected from the much more developed and careful understanding of functionality in trademark law.

All of these ambiguities and other flaws mean the current design patent system isn’t succeeding at what intellectual property law should set out to do: incentivize innovation and creativity.

When design patents were first granted, they routinely covered an entire product, even when the innovation was a particular feature; an infringer could only infringe by intentionally copying the entire product. Now, intent isn’t required, and design patents are granted on small parts of products, making it harder to identify what’s really new or to predict what might be deemed infringing. This problem has been worsened by uncertainty about the infringement standard. Courts aren’t that good at making visual comparisons in the first place—they’re much better with words. And as the Federal Circuit has made it easier to uphold the validity of design patents, the law has also become less clear about how to judge infringement.

In any system, some patents that shouldn’t have been granted will slip through. There will always be instances like this patent on a standard cupholder (D705,618 for “Organizer for Bottles and Cans”):

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But that reality makes setting appropriate standards for validity and infringement in litigated cases even more important. It also increases the impact of the outdated standard for granting damages in design patent infringement cases, which diverges from damages in any other kind of intellectual property case.

In any other infringement case, a successful plaintiff is entitled to damages stemming from the infringement. But if the defendant generated sales for reasons other than the infringing element and can prove that, the plaintiff isn’t entitled to those unrelated profits.

In a design patent case, by contrast, the plaintiff gets the entire profit from sales, regardless of whether the infringing element generated those sales. As a result, plaintiffs have significant incentives to bring design patent infringement cases, while defendants face outsized risks of not settling and hazarding a loss.

Here’s a recent design patent issued to Google (D706,791 for “portion of a display panel with circular play icon”):

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Google doesn’t sue very often; perhaps it’s just investing in a design patent portfolio to fend off other potential design patent plaintiffs.

But suppose it did sue some maker of an electronic device, such as a cellphone, and prevailed. Right now, owning a design patent on that “play” icon would entitle Google to the entire profits from the sale of the phone as a whole, even though customers don’t pay a dime more for the shape of the “play” icon and are most likely indifferent to it. And if someone else owned a different icon, and thought that it was infringed, the phone maker could risk liability to that person for the entire profits for the sale of the phone too. By contrast, while utility patent infringement might lead to significant damages as well, those damages would have to be related to the value conferred by the infringing element, or to a reasonable royalty for the use.

There are solutions that could provide more appropriate incentives to create valuable, attractive designs and protect those designs against copying without overly limiting competition; we have them in other areas of the law.

We just need to start thinking about how design patents fit in to our overall intellectual property regime.

Rebecca Tushnet is a Professor at the Georgetown University School of Law.

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