About 12 years ago, in 2002, I co-authored an article entitled “U.S. Design Patents: an underdog that bites.” The article announced a coming-out stage for design patents:
Companies often seek broad protection for their products and technology, along with strong enforcement provisions, preferably available at a relatively low cost and via a relatively fast procedure. In the past, however, companies have often overlooked a tool that can provide such protection: the US design patent. Instead, companies have focused on trade dress protection and utility patents. In many companies, the trade mark department considered design patents to add little to trade dress protection, while the patent department considered them an inadequate tool to protect their functional inventions. As a result, design patents often fell through the cracks.
Today, however, companies are starting to realize that design patents can provide valuable protection, not only for products traditionally protected by trade dress, but also for inventions traditionally protected by utility patents ... .
Since then, the number of design patent applications filed has continued to grow steadily, with a short lull following the 2008 economic downturn. More importantly, the number of design patents asserted in litigation has increased, leading to a surge in decisions from district courts, the CAFC and the ITC. This recent case law has helped modernize design patent jurisprudence to some degree.
The Egyptian Goddess case of 2008 eliminated an outdated point-of-novelty test. The Crocs ITC cases showed that design patents could be powerful weapons against importations of infringing goods. The on-going Apple v. Samsung case provided a real and modern-world example highlighting the unique advantage of design patent law which provides for damages based on an infringer’s profit. Earlier this year, the CAFC confirmed in Pacific Coast Marine Windshields v. Malibu Boats that the same principles of public notice underlying prosecution history estoppel apply to design patents as well as utility patents. These decisions and others probably would have pleased the late Judge Rich, who was often supportive, respectful and careful in his decisions related to design patents.
However, much is still needed in order to fully modernize the law of ornamental designs. As judge Rich lamented in 1981, “the concept of unobviousness is not well suited to ornamental designs” and “[i]t is time to pass [a legislation] and get the impossible issue of obviousness in design patentability cases off the backs of the courts and the Patent and Trademark Office.” In re Nalbandian (CCPA 1981). Congress has not followed that advice. As a result, courts still struggle with evaluating non-obviousness for ornamental designs.
Another area that needs clarification is the application of the written description requirement to design patents. The recent USPTO proposal and the opposing comments filed by the bar illustrate the challenge.
Another blatant area of confusion is claim interpretation. Should a court verbalize or merely visualize claim construction? Should a claim to a design be construed differently depending on whether the court is addressing invalidity or infringement? What is the role of functionality in claim construction? Should the 2010 case Richardson v. Stanley Works be followed or distinguished? Functionality itself, as an invalidity ground, i.e., lack of ornamentality, could use a dust off. Too many important markets are at stake, including those for replacement parts.
But perhaps the most significant change that is needed, in order for design patent law to mature, is a change in mentality. Too many decisions result from courts’ “judicial hunches,” as Judge Rich called them. Some courts still disrespect design patents, and summarily judge based on their personal views, without much reliance on the evidence of record, that the claimed designs are either not novel, obvious, or not infringed. Perhaps the simple nature of the claimed subject matter (a bottle, a phone, a shoe, etc.) induces some judges to skip the record, ignore experts, short-circuit the fact finders, grant summary judgments by paying only lip-service to the established legal tests, and quickly get a case off their busy docket.