In a legal sense, a design patent constitutes the ornamental or aesthetic aspect of an article. Design patent may consist of three-dimensional features, such as the shape of an article; or two-dimensional features, such as patterns, lines or colour. It takes care of the superficial aspects whereas a utility patent covers the functionality of design / apparatus.

Design patents claim for the drawings instead of focusing on the written description. Such patents are inexpensive with no post-grant fees and can be obtained in 3-6 months with advance planning which can also be expedited. In general, design patents last for at least 10 years from its issuance. However, this time period may vary as per jurisdiction in which we are filing. For instance, the life of a US design patent has been increased up to 15 years from 14 years if they are filed on or after May 13, 2015. [Reference Link 1; & Reference Link 2]

Design patents have been in existence since the 1800s. Nothing has fundamentally changed about the nature of design patents since then. The first US design patent was granted on November 09, 1842 to George Bruce. The Statue of Liberty, Coke bottle, Volkswagen Beetle, Stealth Bomber and Star Wars’ Yoda are all protected by design patents. Design patents have long played an important role in consumer electronics, automotive, apparel, jewellery, packaging and other industries.

Why do you need a Design Patent?

• To create the possibility of creating perpetual trade dress rights that can protect the product configuration forever.
• Design patents protect against wholesale copying of product designs by counterfeiters.
• Design patents keep secondary marketers from making “compatible” replacement parts.
• Design patents ensure that competitors maintain a wide swath between the look of the patent holder’s products and the competitor’s products.

Freedom to Operate FTO Searches : Scope for Design Patents

Industrial design patents are becoming more important because of increased functionality of man-made devices with greater complexity. So innovative companies are constantly seeking superior designs and protecting complex designs. The design patents not only protect your design but also will keep the competitors in check. FTO searches for industrial design is crucial. For instance, companies continue to see the value of design patents – Nike is ranked 5th in the United States in the number of design patents granted to it in 2016, with a total of 275 issued design patents. Number one on the list is Samsung, with 1,629 issued design patents, and Apple Inc. with 433 issued design patents [Source]

Design Patent issued per year [Source]

Freedom to Operate FTO Searches : Is it necessary to take for Design Patents?

Design patents are crucial towards protecting your artwork and also to take necessary legal action whenever your design is infringed upon. Below are examples of lawsuits that were filed on grounds of design patent infringement. These examples will suffice the reason that design patent and design FTO and FTO searches for industrial design are important for big market players:

• Nikola Motors vs. Tesla

Hydrogen fuel cell truck start-up Nikola Motor sued Tesla for infringing on its design patents. Nikola claimed that Tesla’s Semi too closely resembled its Nikola One. Nikola asked for $2 billion in damages. [Source] and link to patent [LAWSUIT]

Nikola sued Tesla on three other design patents in this case:

• The design patent document “D811944” titled “Fuselage” of assignee “Nikola Corp” and issued to the inventors “Trevor Milton” and “Steve Jennes”.

• The design patent document “D811968” titled “Windshield” of assignee “Nikola Corp” and issued to the inventors “Trevor Milton” and “Steve Jennes”.

• The design patent document “D816004” having title “Side Door” of assignee “Nikola Corp” and issued to the inventors “Trevor Milton” and “Steve Jennes”.

Reduction in fossil fuel emissions from their trucks is the aim of Nikola electric vehicle especially for Class 8 trucks which contribute about 7 percent of worldwide greenhouse gases. In 2015, Milton Jennes developed the Nikola One incorporating the innovative designs covered by the design patents in such a way that enabled Nikola One to have a distinguishable design which could be recognized from half-a-mile away. The design elements also gave drivers an unobstructed view of the road, easier and safer access to the vehicle cabin and increased cabin volume by about 30 percent, while reducing the drag coefficient. “By the time Nikola filed its patent applications, it had spent several million dollars developing the Nikola One,” Nikola’s complaint reads. [Source]

• Nike vs. Walmart

Nike has sued Walmart alleging design patent infringement. The infringed patents are – US Design Patent D498914 and D499248. Both the design patents have the title “Portion of a shoe midsole”. [Source]. Details below:

The design patent document “D498914” having title “Portion of a shoe midsole” of and issued to the inventor “Susan Sokolowski”.

The design patent document “D499248” having title “Portion of a shoe midsole” of and issued to the inventor “Susan Sokolowski”.

• Michelin vs. Atturo Tire Corporation and Thailand based Svizz-One Corporation

Tire manufacturer Michelin had filed a case against US-based Atturo Tire Corporation and Thailand based Svizz-One Corporation for patent infringement. The French manufacturer accused both companies of infringing its design patent D483322. The company has now announced that it has settled its dispute with companies. The patent had covered the patterns and shape of tire treads, which are meant to increase the grip of tires on wet roads. [Source]

• Apple vs. Samsung Design (Lawsuit Closed)

Apple and Samsung have had lawsuits over the designs and functionality of their smartphones and tablets since 2011. Samsung was hit with $399 million judgment for allegedly infringing Apple’s designs. The design patents at issue are D618677 (a black rectangle with rounded corners), D593087 (bezel on surrounding rim) and D604305 (colourful grid of 16 icons). [Source]

• Ethicon Endo-Surgery Inc. vs. Covidien Inc.

Ethicon Endo-Surgery Inc. alleged that Covidien’s Sonicision cordless ultrasonic dissection device infringed its utility and design patents. Each of the asserted design patents claimed a portion (or portions) of a design for a surgical device. A representative image from each patent is shown below: [Source]

Freedom to Operate FTO Searches Role for Design Patents

Freedom-to-Operate (FTO) search for design patents are used to investigate the risks of design patent infringement before launching a new product.

Design patent infringement occurs when a company or person violates a design patent term. An ordinary observer wouldn’t be able to tell the difference between a patented object’s design and an accused object’s design when both designs are side by side and it must prove that a company uses the design of other to claim infringement.

Above mentioned lawsuits are prime examples of the loss that a design patent can incur on its infringer. Hence, via design FTO one is assured that similar design patents fail to exist which might pose a threat in future. The design Freedom to Operate FTO Searches also captures closest design that must be kept in mind in case one is thinking about iterating a design.

For instance: An example from Freedom to Operate FTO Searches can be found below:

A short case study:

The above-mentioned example does look quite relevant to the targeted product however; the gear mechanism differentiates from the same. Hence, the found prior is not a direct threat for now but this patent must be kept in mind while redesigning the product using gear mechanism.

Freedom to Operate FTO Searches : How Sagacious IP can help you in this?

Sagacious IP helps companies and individuals to make more detailed FTO searches on industrial design and to identify potential barriers towards patent approval or product launches. Following rigorous steps are followed by us to conduct a healthy Freedom to Operate FTO Searches.

Results in the final report are provided in the following categories:

• Identical Relevant Design:

The Design Patent/Applications that disclose exact design as evident in the shared designs are marked as identical designs.

• Nearly Identical Relevant Design:

The Design Patent/Applications that disclose almost same design as evident in the shared designs are marked as nearly identical designs.

• Related Design:

Those design applications which are not identical to the subject design but might be useful to the client as these are partially similar to the subject design, are marked as Related.

On the basis of this detailed report, our clients are able to make a clear judgement for further proceedings on their respective business assignments. A brief sample of such reports can be found below.

Download our sample Freedom to Operate FTO Searches analysis report here.

– Prabha Shankar (Engineering Searching), Nitin Sharma (Engineering Searching), and The Editorial Team

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