Often overlooked, the design patent offers valuable protection in any intellectual property portfolio. Patent protection revolves around the protection of an article of manufacture. Utility patents protect the way an article of manufacture works. However, a design patent protects the ornamental design of the article. In-other-words, a design patent protects the way something looks. As a result, design patents can be extremely valuable, such as with medical devices, when learning through repetition and feel is vital. Alternatively, if the invention relies on replacement components, a design patent can be an effective way to ensure comprehensive protection.
The Intersection of Functionality and Design
As previously mentioned, a design patent claims the ornamental design of an item explicitly. In fact, the sole claim in a design patent is directed toward “the ornamental design for [the invention], as shown and described.” Therefore, a design patent must claim the ornamental design, rather than the functionality of the article. However, there is some room for functionality, as long as the claimed design is not “primarily functional.” Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016).
Thus, it can be beneficial to include more of the design of the actual article itself—including environmental features. Claimed in broken lines, these features are not part of the design. However, by placing these features in broken lines, the Applicant can provide context to its design. Furthermore, future continuation applications can then claim the broken lines. Thereby, increasing the patent
atents Can Help Avoid the Doctrine of Exhaustion and Repair Doctrine
Typically, under the Doctrine of Exhaustion, when a patent holder sells its product, its rights in that product are said to be “exhausted.” As a result, the patent holder can no longer assert its patent rights against that particular product. Similarly, the Repair Doctrine permits the owner of a particular product to repair its particular product without being subject to liability.
However, last year the Federal Circuit held that the doctrines do not “permit a purchaser to infringe other patents.” Emphasis added. Thus, a purchaser or supplier cannot avoid liability created as the result of a design patent under these doctrines. Auto. Body Parts Ass’n v. Ford Global Techs. Inc., 930 F.3d 1314 (Fed. Cir. 2019). Accordingly, even though the Doctrine of Exhaustion and Repair Doctrine may have been “exhausted,” liability can still be found with respect to other patents, such as design patents.
Design patents are an extremely valuable tool to increase the value of any patent portfolio. In particular, design patents assist in preventing third-parties from designing competing products with the same feel. Take a surgeon, for example, who operates daily on patients using the same scalpel blade. The daily repetition leads to the surgeon preferring that particular scalpel in their hand. Generated by the specific design of the scalpel, the feel in the surgeon’s hand can be subject to design patent protection.
Thus, a design patent on the design of the handle possibly prevents third-parties from manufacturing their scalpel blades with the same “feel.” Accordingly, when a surgeon tries the competitor’s scalpel, the blade will likely feel awkward in their hand. This leads to the surgeon preferring the patent holder’s blade to the competitors. Thereby, ensuring that the patent holder’s scalpels are bought over and over against because of their unique, patented design.
In addition, a design patent can be an effective way to prevent third-party manufacturers from providing replacement parts for the patent’s holders device. By having a design patent that covers the specific way a replacement part looks, rather than its function, third-party manufactures may be prohibited from manufacturing compatible replacement parts for the device itself.