Patents

In our experience, startups and founders often treat design patents as a lesser form of protection – cheaper than a utility patent, perhaps useful for marketing, but not really a serious patent. That view ignores some real strategic benefits they can provide. In the right circumstances, design patents are faster, cheaper, harder to invalidate, and easier to enforce than utility patents. They also carry a damages remedy – disgorgement of the infringer’s profits – that utility patents do not carry. A complete IP strategy considers when a design patent is the better option, when it is the only option, and when it should sit alongside a utility patent on the same product.

Design patents will not work for products whose appearance is purely functional, and their scope is admittedly narrow. However, because the infringement analysis is subjective and fact-intensive, it can be difficult for an accused infringer to dispose of the case early – which gives the patent holder significant leverage. 

What a Design Patent Protects

A design patent protects the ornamental appearance of an article of manufacture. It does not protect function. The claim is essentially “what is shown in the drawings,” and the protection runs for 15 years from the date of issuance. That narrower-than-utility scope is what leads to the common misperception that design patents are lightweight. In fact, the narrower scope is part of what makes them strategically powerful in the right setting.

Speed and Cost – Especially for Short-Lifecycle Products

Design patent applications are typically examined and issued in roughly 18 to 24 months, although we have seen significantly faster examinations in some recent cases. Utility patent applications routinely take three years or more. For products with a short commercial life – consumer electronics, fashion-driven goods, accessories, anything where the design will be displaced within a few selling seasons – the utility patent timeline often outruns the product’s relevance. A design patent that issues while the product is still commercially important provides actual protection during the window that matters. A utility patent that issues two years after the product is discontinued protects a museum piece.

Design patents are also significantly less expensive to prepare and prosecute. First-action allowances are common, and most of the cost is in good drawings rather than extensive specification work. For a startup with a limited IP budget and a product line that turns over quickly, the cost-per-issued-claim difference is substantial.

When a Design Patent Is the Only Patent Available

There is another situation in which design patents are not just a cheaper alternative but the only patent option. If the functional aspects of a product are not patentable – because the function is obvious, anticipated by prior art, or directed to subject matter the Patent Office considers ineligible under Section 101 – there may be no path to a utility patent at all. In that case, a design patent on the product’s appearance may be the only patent protection available. Thin protection is better than no protection. A design patent puts competitors on notice that the appearance is claimed, creates a basis for enforcement action, and provides leverage in disputes even where utility protection is unobtainable.

Damages and the Disgorgement Remedy

In a utility patent case, the patent owner can recover a reasonable royalty or lost profits. In a design patent case, the patent owner can also seek the infringer’s total profits on the article of manufacture under 35 USC § 289. That remedy – disgorgement of profits – is not available for utility patents and can easily exceed the lost profits or reasonable royalty damages a utility patent would yield in the same case. 

Litigation Advantages: The Ordinary Observer Test and Summary Judgment

Design patent infringement depends on a comparison of the patent’s drawings to the accused product through the eyes of the “ordinary observer” who is aware of the prior art. It is an inherently subjective and fact-intensive test, which means it can be easier for a patent holder to survive summary judgment. This provides design patent holders with significant leverage against infringers who wish to avoid the expense and risk of a trial.