Design Patents: No longer the Province of Individual Inventors

Thirty years ago, most design patent applications were filed by individual inventors. The graphs below show how that statistic has changed over the years. Notably, almost eighty percent of today’s issued patents are associated with some assignee by the time of issuance.  Litigation rates are comparable as well. According to my data from 2600 litigated design patents stretching back about a decade, 66% of litigated patents are associated with an assignee at the time of issuance.

This change could be partially explained by some new ease of filing assignments or registering a corporate form. However, I see two other major factors driving the split. First, the PTO & FTC crack-down on any attorney associated with an invention promotion company means that the patent attorneys who have historically filed the most design patents on behalf of individual inventors are no longer available. Most importantly, however, is the relatively small set of corporations who have figured out how to successfully use design patents.

Comments

[ip-esq]

What are some examples of niche corporations that use design patents? Not sure what that means. Please clarify.

[Malcolm Mooney]

"They promise enthusiastic inventors that they can provide professional assistance in getting a patent and securing licensing and manufacturing agreements with manufacturers. Time after time, however, these firms lie to consumers about the sincerity of their belief in an idea and its marketability. Mark Twain once said that the name of the greatest inventor is accident. But it is no accident that these firms profit while the dreams of their customers die. That is their plan, and up to now, they have been very successful in perpetrating that plan. Virtually no consumers have even made back their investment, let alone any profit, from these companies' services"

Fascinating.

[frances]

Probably every company that makes consumer products uses design patents. Cars are covered by design patents head-to-toe, including tail lights and the shape of the hood. Tire treads. Hangers. Oxygen tanks. The iPod, all Apple products. Toothbrushes. The plastic shrouds that cover the sprayer mechanism on Windex bottles. Screw heads. Furniture. Umbrellas. Sneakers. Hammers. Pens. Washing machines. Just about everything that you can think of. If it's a product designed by an industrial designer, and it generates significant revenue, it is likely to be covered by a design patent. Design patent litigation awards can be as high as $50,000,000. They are not trivial.

[curious]

further to frances' e-mail, many companies devote large resources to product designs and IMHO deserve strong (design) patent protection for their new and non-obvious designs

[anonymous]

Does frances or anyone else know of a design patent case where the award was in the range of $50M?

[real anonymous]

"Design patent litigation awards can be as high as $50,000,000. They are not trivial."

35 U.S.C. 289 Additional remedy for infringement of design patent.

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of *his total profit*, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.

[frances]

I have to ask my source what company won that award. When you consider that Gillette spent $700,000,000 in product development costs for their Mach3 razor, with its "thicket of patents" (utility and design), extrapolate to what the razor's sales must be, then what an award would be if Gillette won an infringement suit...

[David J. French]

David French writes:

Design patents relate to advertising. If you promote a product that has a "look", competitors will want to borrow-on the impression made by all that advertising.

A good example is the Head and Shoulders shampoo bottle that came out some 20 or 25 years ago. Within months, after an extensive advertising campaign by the product originator, competitors were using bottles of the same shape.

The protection may be narrow - against almost exact look-alikes, but in this scenario, it can be very important.