*The views expressed herein are solely those of the author and do not necessarily represent the view of his firm or its clients.

The mere mention of design patents in the title of this article has already gotten most of you thinking about the ongoing trial of Apple against Samsung. Many are waiting to see which side of the dispute I'll favor and some people are ready to unleash their arguments against my position. They'll have to keep waiting, though, because this article isn't about Apple v. Samsung...well, as much as any article on design patents right now can manage to not be about Apple v. Samsung.

While we wait through what many are characterizing as the "boring" part of the trial, I'd like to take some time to discuss design patents in general. I'm sure that many industrial designers who are following the Apple v. Samsung case are wondering how a handful of design patents, the oft-maligned afterthought of the intellectual property (or "IP" world), can make up a significant part of a $2.5 billion lawsuit. More importantly, designers should be interested to know what the impact of this case will be on design patents and how that will affect their own work.

From a purely legal standpoint, nothing is likely to change because of Apple v. Samsung, regardless of the outcome. Any design patent not involved in the trial will be the same on the day after the verdict as it was the day before. The decision in Apple v. Samsung is going to be based on how the jury interprets the facts of the case. The only way any law has a chance of being changed is if a decision gets appealed.

The real potential for impact, however lies in the mere fact that the design and business worlds are paying close attention to the design patent side of this case in the first place. Design patents have been around for over 150 years and in that time have only seen limited usage. Sure, many people or corporations have sued in the past to enforce their design rights with some success, but both the number of design patent lawsuits and the number of design patents granted pale in comparison to those of utility patents.

The traditionally meager status of design patents is the reason why many designers are likely surprised by the prominence of design patents in Apple v. Samsung. In all reality, practically everyone who has an opinion holds design patents in the lowest esteem of all the different forms of IP protection. You'll find that most people listing the different areas of intellectual property will rattle off copyright, trademark and patent while actually only thinking of utility patents—the more esteemed form of patent protection that is geared toward what an invention is or how it functions.

If asked about protection for the visual aspects of a product's design, that same person might then dismissively mention the existence of a design patent before relaying a common view about them: they're easy to get around, but they're cheap and easy to get. This perspective views design patents, at best, a quick way to get a patent number to slap on a product.

The negative view of design patents is so widespread that even most designers feel that there is no meaningful way to protect the appearance of a product. The fact is that while many of the innovations that come out of design and design thinking find adequate protection in utility patents, most designers feel that there is no meaningful way to protect the appearance of a product. As a result, designers often feel that a substantial part of their work is left vulnerable to copying. This feeling exists in spite of the fact that an entire section of IP law in the United States has been carved out for the protection of a product's visual design.

Before we get too far in, it is important to understand the different types of IP protection and how they relate to each other. Put as simply as possible, patents protect things and methods for making or using things, trademarks essentially protect brand identity and copyrights protect artistic expression. As mentioned above, patents are further broken down into utility patents and design patents. While methods fit exclusively within the area of utility patents, physical things can find protection on both the utility and design sides.

Essentially, the structure or functional elements of a thing can be protected by utility patents, and the physical appearance can be protected by design patents. If there are any features of a product that straddle the line between being functional or being visual, you can often find a way to get protection from both types of patents. This alone is a major advantage of design patents over trademarks and copyrights, which both specifically exclude coverage for anything functional (the recent grant of trademark protection to Hershey's notable chocolate bar pattern notwithstanding). To get design protection for something that has unique characteristics both visually and functionally, all you have to do is to find a way to present it so that the appearance of what you're protecting is dictated more by aesthetics than by function, if only slightly.

While Apple v. Samsung isn't currently rewriting any design patent laws, it's certainly putting design patents in a position that makes them hard to ignore. Apple's focus on its design rights with respect to a product that is also covered by over 200 utility patents (by Apple's own count) is making people realize that, if you're serious about design, you need to seriously consider design patents. The key for designers going forward is going to be knowing what it means to be serious about design patents.

Unfortunately, I can't simply say that the common, dismissive view of design patents is absolutely false and that filing more design patent applications and suing more people for design patent infringement will fix everything. The fact is that not all design patents are created equal, and that it's really easy to end up with a bad one. If you go into the patent process with the view that you're just trying to get a cheap and easy patent, a design patent can fit that bill, but it may prove to be worth about the amount of consideration and time that went into it. Often, this ends up being very little or nothing at all. On the other hand, with the right thought process and a little extra effort, it is actually possible to get valuable coverage from a design patent.

The problem is that the cheap and easy approach to design patents is so pervasive that it weighs down the entire design patent system. The result is that each of the components of this view have been almost accepted as fact. However, the thinking that design patents are easy to avoid, that they're cheap and that their only redeeming quality is that they're easy to get, are really misconceptions about design patents that arose over time from lack of understanding of or appreciation for design itself. As you can see, this problem is bigger than three individual design patents and can't be fixed by one simple trial, but designers can use the opportunity presented by the current attention to design patents as a way to take steps to erase these misconceptions.

To understand how to get valuable design patents we need to understand why so many bad design patents have been filed and have been issued in the past. This involves exploring each misconception about design patents to see that they are not indicative of inherent limitations of design patents in general. Of course, simply knowing that good design patents are a possibility is only one step to actually getting one yourself. Fortunately, there are a few simple things that designers can do themselves to ensure that the design patents they get or that cover their designs are worth the effort and expense.

Misconception 1: Design Patents Are Easy to Get Around

Everything starts with the idea that design patents are inherently narrow in scope and that any design patent can be avoided or "designed around" by simply making some minor change to the original design. Historically, it's true that most of the people who have tried to sue someone for infringement of a design patent have found that their patents can't protect against much more than blatant copies. We can see that this isn't always the case though, by the simple fact that Apple's case against Samsung has made it this far. The reason why people have such a hard time covering other products with their design patents, however, is really a problem with how those specific patents are put together and not because of some built-in limitation of design patents in general. To explain how it's possible to get decent, or "broad," protection from design patents it's helpful to look at the different ways in which both designers and patent lawyers approach creating applications for utility patents and design patents. I'm sure that a good number of industrial designers reading this article have been through or at least looked into the ins-and-outs of the patent process. Those who have experience specifically on the utility side should appreciate a patent lawyer's ability to take a two-page description of a device and a few low-quality images and turn them into a comprehensive treatise of a patent application complete with an abundance of drawings and a written description exploring every possible permutation of the device, along with the requisite number of "whereats" and "thereofs" that are the hallmarks of any professionally-drafted utility application.

When a patent lawyer works with an inventor on a utility patent, the point of turning a two-page disclosure into a more lengthy patent application isn't just to allow the patent lawyer to bill hours. It's done to increase the overall value of the patent by boiling down the inventor's description to isolate the essence of an invention and then making sure that the invention is protected in every reasonable context across all reasonably-possible variations. This helps establish a basis for broad utility patent protection.

Another important step in the utility patent assembly process is to identify when a single product or idea actually contains multiple inventions that are related but can actually stand on their own for purposes of a patent application. For example, if you were to come up with a new design for a desk lamp with a unique arm structure and a specific way of arranging the LEDs that you use for a light source, you would want to characterize the arm as its own invention, apart from the LED array, and vice versa. That way, someone wouldn't necessarily have to copy your entire lamp to infringe on your patent rights, but would only have to copy one of your inventions. The way that individual inventions are separated and characterized, as well as the context in which they're presented, is called "claiming" an invention.

This process of appropriately claiming an invention as your own is critical to building value into a patent application and any patent that is ultimately awarded based on that application. In a utility patent, the invention is claimed in a series of numbered paragraphs at the end of the application's text. These paragraphs are appropriately referred to as the claims of the application and are barely decipherable by anyone other than a patent lawyer.

A set of utility claims will include one or more independent claims, which when well-written, will attempt to put the invention, or inventions, in as broad of terms as possible. Determining how broad claims can be often involves making the claims just narrow enough to exclude any known "prior art," or other patents or products that existed before the claimed product or method. The claims also have to be for something tangible, that is they can't be for an abstract idea or concept.

The claims can also include several dependent claims that respectively refer back to an independent claim and add further detail or context to the independent claim. These can act as a kind of backup position for use during litigation or the Patent Office's examination of the application. Dependent claims can also be used simply to increase the total number of claims to a more intimidating quantity, if you think that's necessary.

A utility patent's claims can be difficult to understand and are also difficult to write, but they are really the essence of a utility patent. When a patent lawyer prepares an application for a utility patent, they spend a great deal of time and even use a little creativity drafting the claims. It really is an art form of its own particular kind and an essential one at that. During a patent lawsuit it's the claims that are argued over and the claims that are ultimately infringed or not by the accused product or process.

The remaining text of the application is a lengthy written description that can refer to a set of technical drawings included with the application. The point of this description is to provide support for the claims by fully describing the invention in a way that a person with general knowledge of the technical area could re-create the invention. The theory behind this is that when a patent expires, the public should be able to re-create the invention for its own use based on the disclosure.

A design patent by contrast has little writing at all. A design patent relies on sets of drawing figures that illustrate the design itself and act as both the description and claims of the patent. The only writing in a design patent is usually a short description of what type of product the covered design is for and a listing of the views shown by the figures. There are no artfully-written claim paragraphs and there is no lengthy written description where the lawyer can elaborate on all the different variations of the invention that they can imagine. For all practical purposes there are only the figures in a design patent. These drawings represent both the disclosure that the patent contributes to the world and the claims that the patent holder can assert against someone else. The design, in essence, speaks for itself.

What most patent lawyers and designers alike tend to not realize or appreciate is that the general approach to claiming an invention in a utility patent application can also be used in design patents. Of course, the language used to implement the claim strategy and the overall context of the claims are vastly different. In a utility patent the claims are written to describe the technical characteristics of a product, but in a design patent the claims are literally drawn to illustrate a product's visual characteristics. Regardless of the language used, just as in utility patent claims, the claim of a design patent can be tailored to include the essential elements of a design while leaving out what's unimportant. In addition, just as in a utility patent, a design patent (or a number of related design patents) can claim the important and inventive aspects of a design separately.

The idea that a design can be partially claimed isn't new. Almost any patent lawyer will know that features can be shown in a design but excluded from what's claimed by simply putting those features in dashed lines. The greatest problem, however, is that most patent lawyers can't think of a product's design any more deeply than simply as a collection of a product's features or parts. Because of this thinking, design patents that claim less than a product's entire design often focus on the "front half" of a product or the overall shape without the buttons or the screen, for example. Any designer knows that a design is much more than its features and their respective locations. Fortunately, the design patent rules that allow for selective claiming aren't as limited as many patent lawyers' knowledge of design. While there may be instances where it is necessary to claim the design of different parts of the product, it can be even more beneficial to try to independently protect the various aspects of the design that arise from the actual visual design considerations.

A good way to illustrate this idea is with respect to the design of a car. Of course, cars usually have their own unique overall designs, but you can also think about the headlights or the grille as having patentable designs themselves. Even the way these and other features are put together and made cohesive can involve a multitude of different considerations that are based on relationships between the features themselves and how they shape the overall design. Developing and refining these relationships is really the essence of visual design, and any of these relationships that can be shown in a drawing and that result in something that is actually new or unique can be claimed in a design patent.

Continuing with the car example, you can take a unique design for a car's headlight and further break it down based on its own features and their influences. Likely, a portion of the shape was influenced by the shape of the hood, another area by the shape of the fender bulge, and another part by the shape of the grille. This thought process can continue down to excessively minute details, and it's probably unreasonable to try to patent the result of every design consideration or all of the different elements of a design. Approaching the design patent process with this type of thinking, however, can help in developing a design patent strategy that's aimed at protecting the important aspects of a design rather than simply the prominent parts of a product. Even more important, it can lead to patents that capture the aspects of an overall design that are likely to catch the attention of a copyist or get stuck in someone else's head and eventually wind up in their own designs.

In reality, very few of the design patents in existence actually began with this type of thought or strategy. While thinking critically about a design can help to get a design patent or a set of design patents that will prove difficult to avoid, it's not a requirement. The Patent Office doesn't evaluate a patent, design or utility, for how well it actually protects an invention. A patent examiner won't tell you if your patent is any good or not. The Patent Office is really just a gatekeeper to make sure your application meets their statutory requirements and that you're not trying to claim something that has already been patented or that would be obvious in view of other patents, or what's called "prior art."

In fact, it often takes years for representatives of companies that produce and sell products covered by design patents to realize that their patents aren't any good. That usually doesn't happen until they compare their patents to knock-offs or the suspiciously similar products of their competitors. It's at that point that they realize their patents left room for the copyist to make minor changes to avoid their patents, or that their patents allowed competitors to pick and choose a few notable characteristics to borrow. By then it's too late to change the way a patent claims a design so the only option is to blame the patent system for not providing enough protection.

It's important for designers to seriously consider obtaining design patents to protect their work. Even if visual design isn't your only contribution to a product and even if that product is the subject of utility patent applications, design patents can be critical to protecting what is often the first thing people use to distinguish a product. Sometimes it might even be necessary to argue for the decision-makers, if that's not your role, to aggressively pursue design patents that revolve around a thorough strategy because you'll be fighting against this and the other prevailing myths about design patents. Although the ideas that design patents are cheap and only useful as an easy way to get some kind of patent partly flow from the false idea that design patents are inherently limited, they also have their own origins based on unique misconceptions that are worth exploring, which I'll do in the next articles in this series.

The Design of Design Patents
» Part 1: What Every Designer Should Know About Protecting Your Work
» Part 2: The Price of Protection
» Part 3: More than Just a Patent Number
» Part 4: Practical Advice for Designers

BONUS >> Download the whole series as a .pdf here!

About Michael Hages