Design patents are different. While that is something IP lawyers and their clients know, an information gap relating to design patents persists relative to their utility brethren. Thankfully, design patents are starting to garner more attention, driven in large part by younger academics interested in the interplay between design generally and IP law, as well as by a changing marketplace for consumer products. More on the former in a bit. As for the latter point, there are a number of reasons that design patents have become a more important piece of the IP picture — especially for IP owners in the business of selling products to consumers.
In fact, design patents are more attractive than ever to makers and sellers of consumer products. The rise of sales online — which will only accelerate as the prolonged COVID-19 lockdown turns us all into even more avid online shoppers — puts a premium on the “look” of products, which encourages manufacturers to develop unique design elements for their products wherever possible. Gotta have unique thumbnail pics to stand out, after all. Add in the ease of enforcing design patents on online marketplaces like Amazon and eBay, and you have a recipe for increased attention to design patents by online sellers. Furthermore, the consolidation (destruction?) of brick-and-mortar retail, which has resulted in fewer and fewer options for shoppers, also puts a premium on distinctive product design for the reduced subset of products blessed to vie for limited shelf space.
Design patents are also attractive to companies that seek to take advantage of quicker manufacturing times, as well as the compression of the supply chain that allows an American consumer to open the mailbox and find a gadget (usually made somewhere in China) wrapped in that magic thick silver masking-tape “envelope” many of us have come to know. Moreover, the lower cost and greater odds of allowance make design patents an alluring “starter IP asset” for smaller companies to pursue. Especially since there is no risk of being ensnared in Alice’s siren song when dealing with a design patent.
Enough about the qualities that make design patents important in the current marketplace. Let’s talk about how they accomplish their function. For a patent, this is usually a pretty simple analysis. On one hand, you have the soft marketing benefits of a patent — increased attractiveness of the IP owner to investors, or of the patented product to customers, etc. On the other, more fundamental hand, you have the basic raison d’etre of any patent — the right to exclude others from practicing the invention without permission. Also known as enforcement. While utility patent enforcement is a relatively open book (with many data services purveyors happy to sell subscriptions to you to make sure you never miss a page) things have traditionally been more opaque when it comes to design patent enforcement. True, there are many fewer design patent cases, and the ones that get filed are usually considered lower stakes (with some rare exceptions). But that doesn’t mean that IP lawyers get a pass from knowing as much as they can about design patent litigation anyway.
I was glad, therefore, to see an upcoming Alabama Law Review paper from Northwestern Law’s David Schwartz and current Kirkland associate Xaviere Giroud called “The Secret World of Design Patents.” While I commend the whole article, I was especially interested in the answers it provided to a number of basic questions about design patent enforcement, which will be discussed below in no particular order.
Let’s start with the “who?” — as in what types of entities enforce design patents. In contrast to utility patents, where nonpracticing entities seem to have cornered an ever-increasing share of the enforcement market, when it comes to design patents “the top asserted design patents are assigned to practicing entities, not NPEs.” This fundamental difference between design patent vs. utility patent enforcement manifests itself in “how” design patents are enforced as well. For one, the article recognizes that most “design patent litigation occurs between small and medium entities than any other pair category,” meaning that the David v. Goliath dynamic at the heart of many utility patent battles may be missing in the design patent context. Moreover, the authors surmise that design patents “may be sufficient to successfully litigate against counterfeiters, who intend to deceive consumers,” which is consistent with how we use our own design patent clients’ assets to police infringement online, for example.
The distribution (or “where?”) of design patent case filings also differs from that of utility patent disputes. As the article states: “Design patent cases are clustered in different districts than utility patent cases, namely the Central District of California and the Northern District of Illinois, rather than the Eastern District of Texas and the District of Delaware.” At a minimum, the locus of cases near design and manufacturing hubs — as opposed to courts that are perceived as patent-owner friendly — suggests that design patent owners are less likely to engage in forum shopping when bringing their cases. At the same time, it can be challenging for design patent litigants to conform their cases to the existing “local patent rules”-based case management approaches that have arisen in courts nationwide. Tellingly, the article suggests that the design patent bar could benefit from an addition of more experienced practitioners with a focus on design patents, as opposed to having design patent cases being handled by utility patent litigators as a matter of course.
Ultimately, there is a need for continued scholarship around design patents, especially as they increase in commercial importance. No longer can we afford to treat design patents as part of a “secret world” hiding in plain sight. Nor can we ignore the power of design patents to curb the counterfeit crisis, particularly when it comes to products ordered online. As the authors of the subject article correctly noted, design patent litigation deserves the same level of analysis as what utility patent litigation receives, with their article another incremental step in that direction. Because it is not enough to realize that design patents are different. Our clients depend on us to know how to use them wisely as well.
Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.