Undoubtedly, Sun Tzu did not have intellectual property portfolios in mind, but his philosophy applies nonetheless because what is this intellectual property game being played for if not intellectual property warfare? Indeed, an intellectual property portfolio is often characterized as being used defensively or offensively. For example, a well-strategized intellectual property portfolio can help avoid conflict, turn the tides in negotiations, generate licensing revenue and result in an injunction or a collection of monetary damages upon the finding of infringement. So in evaluating whether your intellectual property portfolio is doing all it should it is important to consider whether design patents should be included in your arsenal.

There are two main types of patents in the United States: utility patents and design patents. There are substantially more utility patent applications filed each year with the United States Patent and Trademark Office (USPTO) than design patent applications. The number of filings in 2012 is exemplary: 576,763 patent applications were filed with the USPTO. Among this total, design patent applications accounted for 5.7% of the filings whereas utility patent applications accounted for 94.1% of the filings. While utility patent applications will understandably continue to remain the primary type of application filed due to the broad type of protection afforded, the numbers still beg the following question: Are design patents underutilized?

Design patents protect the visual characteristics of an article as opposed to functional characteristics—in other words, they protect the look of an article such as a product or packaging. For example, a design patent may protect a design, such as a floral pattern, located on the back of a phone. Even graphics presented on a display (e.g., computer display, smart phone display, tablet display and the like) may qualify as patentable subject matter for a design patent. Utility patents, on the other hand, protect the functional and structural characteristics of an article, how an article is used and how an article is manufactured.

The protection of visual characteristics afforded by design patents may sound oddly familiar to copyright and trade dress protection because there is indeed some overlap. Copyright law generally protects the original expression of an idea. For example, the idea of putting a floral pattern on the back of a phone is not copyrightable, but the specific design (i.e., the expression) of the floral pattern may be copyrightable. Trade dress protects visual characteristics of an article to the extent the visual characteristics identify the source of the article to consumers. For example, consumers may see a floral pattern on the back and know that the phone is sold by a specific company. This floral pattern illustrates that different forms of intellectual property may be available to protect the same visual characteristic but from different angles (and subject to different eligibility requirements).

If trade dress and/or copyright provide other means to protect visual characteristics which, frankly, usually can be acquired more cheaply and quickly than a design patent, why consider expending monies to obtain design patents? There is an easy answer: Design patents provide an additional intellectual property asset that may be licensed, used in settlement negotiations, and/or asserted against infringers to collect damages. Notably, damages for infringement of a design patent, copyright, and trade dress for the identical visual characteristics are calculated independently from one another. In addition, copyright and trade dress infringement actions may fail where a design patent infringement action may succeed as each type of intellectual property has different criteria and, similarly, the elements and standards differ to establish infringement of each type of intellectual property. Therefore, an injured party may be able to, for example, show that it has a proper design patent and copyright but may only succeed in establishing the elements for copyright infringement. Design patents may also ease the ability for a company to obtain trade dress protection. Still further, an intellectual property portfolio with design patents demonstrates a certain level of sophistication that demands respect and enables articles to be marked with “patent pending.”

In summary, anyone seeking to have a complete intellectual property portfolio should consider whether they may have rights that satisfy the requirements for design patents and, if so, whether adding design patents will increase the value to such portfolio in a meaningful way.