Los Angeles Design Patent Attorney

Intellectual Property Law Firm Represents Clients in Design Patent Infringement Claims

Patents protect various aspects of inventions. The most common are utility patents, which protect the useful aspects of an invention. Design patents also provide patent protection for design elements. 

In recent years, the number of design patent applications filed and design patent infringement claims has increased. At Cohen IP, our experienced Los Angeles design patent attorneys can help you protect your design patent during both the application and litigation stages. 

Design Patent Basics

A design patent protects the visual or design elements of a manufactured product. If an ornamental feature of the product also serves a useful function, it may fall under design patent protections.

Products with a distinct shape or configuration or that have unique surface decoration, may qualify for design patent protection. Examples of items that qualify for design patents include:

• The unique shape of a soda bottle.
• The configuration of the keypad on a mobile phone in a “swoop” or “wave” pattern.
• Emojis and fonts. 
• A distinctive shape for sunglasses, handbags, and other fashion items. 

Design patents have a term of 15 years from the date of issuance. During this time, the design cannot be produced, copied, used, or imported into the United States by anyone other than the holder of the design patent. The patent holder may license others to produce, copy, use, or import the design, however. 

Because both fall under patent law, it is not uncommon to confuse design patents and utility patents. A design patent protects how an object looks, while a utility patent protects how the object functions. 

Many items may be eligible for both design and utility patent protection. In the mobile phone keypad example, for instance, the keypad may be eligible for design patent protection for its “wave” design and for utility patent protection if it utilizes a novel method for securing the keys or recording their input when pressed. Securing a design patent alone will not protect the securing or recording features, nor will securing a utility patent alone protect the wave design.

The line between design and utility patent protection can be difficult to draw for certain items. For example, the distinctive Coca-Cola bottle shape is a design feature that is part of the bottle, but that is not essential to the function of the bottle – Coca-Cola products could still usefully be bottled in an ordinary cylindrical container. For this reason, the bottle’s shape can be protected by a design patent. 

The threads at the top of the bottle used to secure the bottle’s cap, however, cannot be separated from the bottle and still allow a screw top to attach. These threads cannot be protected by a design patent because their shape is essential to the bottle’s function. They may, however, be eligible for protection under a utility patent if they are a novel and non-obvious innovation in securing soda bottle caps. 

Other features also distinguish design patents and utility patents. For instance, a design patent may contain only a single claim, while utility patents typically contain as many claims as necessary to secure full protection of the invention. While this requirement often makes design patent applications simpler than utility patent applications, it can be confusing. 

Working with an experienced patent attorney can help ensure your invention receives all the patent protections it requires. 

Design Patents vs. Copyright Protection

Design patents and copyright protection both cover aesthetic features like design and artwork. Yet these two forms of intellectual property protection are not interchangeable. 

Copyright protection applies to creative or aesthetic works “fixed in a tangible medium of expression.” Typically, it applies to art, music, written works, and other creative or aesthetic works appreciated for how they look and not what they do. 

Copyright only applies to useful items when the creative aspects of the work can be identified or exist independently of the usefulness of the item. For instance, a sculpture used as the base of a lamp might be protected by copyright, as the sculpture can still be enjoyed and reproduced even if the lamp parts are taken out. Similarly, copyright protects an album recorded on a CD, but it does not protect the CD itself, nor does it protect any player into which the CD is placed. 

Design patents protect the aesthetic elements of a useful object when those elements cannot be separated from the useful object. For instance, the distinct shape of a Coca-Cola bottle is fully integrated with the bottle itself. The shape cannot be separated from the bottle, so it qualifies for design patent protection. “Surface ornamentation” also qualifies for design patent protection when the ornamentation cannot exist without the surface to which it is applied. 

In some instances, determining whether an aesthetic feature qualifies for design patent or copyright protection is simple. In others, it can be more challenging. Determining whether copyright or trademark protection is the most appropriate for a work can pose additional questions. 

In all these instances, working with an experienced intellectual property lawyer can clarify matters. An attorney can help ensure that each form of intellectual property involved in a creative work, invention, or business receives the protection it requires. 

Design Patent Infringement

Securing a design patent is an essential first step in receiving the legal protections your work requires. After you have a patent in hand, however, you may face design patent infringement from competing works. Or you may be accused of infringement by someone else who holds a design patent.

A design patent infringement claim focuses on whether an ordinary observer would find the design at issue to be “substantially similar” to the patented design. Often, the “substantially similar” question focuses on whether an ordinary observer would purchase the design at issue because they mistakenly believed it came from the same source as the patented design. Courts use this test to help them identify what is similar about the two designs and what differs, as well as to provide context in an infringement claim. This process is known as the “prior art” test, as the court examines the prior art in the existing patent to help it determine whether infringement has occurred. Analyzing the prior art references helps to determine the scope of the protected design. 

In 2023, the Federal Circuit provided additional clarification on how this “prior art” test applies in design patent infringement claims. In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., the Federal Circuit explained the types of prior art admissible when courts and juries perform an infringement analysis. 

Specifically, the court held that prior art designs can only be used for comparison in design patent infringement cases when the prior art is applied to the same article of manufacture as the accused design. For example, a design patent infringement case that focuses on the “wave” design of a phone’s keypad can only compare that design to uses on other phone keypads – not on other items. The standard is intended to provide clarity and help juries and judges focus on the most relevant issues in the case before them. 

The court also clarified that the presence of a logo isn’t enough on its own to decide a patent infringement claim. Rather, the judge or jury should consider the logo as part of the overall analysis of whether a design is “substantially similar” enough to confuse consumers. 

Whenever a court provides clarification or a new standard, related cases become more challenging as courts and attorneys work to understand how to apply the new ruling to existing cases. The effect of the Columbia Sportswear ruling on design patent claims will be no different. Working with an experienced design patent infringement attorney can help you protect your legal rights and secure an outcome consistent with patent law principles.

How an Experienced Design Patent Infringement Lawyer Can Help

The Columbia Sportswear holding leaves an open question as to how to handle the appearance of logos and trademarks in design patent infringement claims. Applying the new prior art standard will also take some time to clarify, as its application in each future design patent infringement case will be tailored to fit the facts of the case – revealing potential challenges, unanswered questions, and pitfalls that courts must address. 

Whether you seek to secure a design patent or you’re facing infringement issues, working with an experienced attorney is essential. An attorney can:

• Ensure your patent application is thorough and complete, improving your chances the application will be granted,
• Answer questions and explain your legal rights and options in an infringement claim,
• Gather evidence and build a case on your behalf,
• Negotiate as needed to bring your case to a satisfactory conclusion and
• Prepare to represent you vigorously in court if needed. 

If you suspect someone else has infringed your design patent or you’re facing accusations of design patent infringement, don’t fight your case alone. Talk to the experienced Los Angeles design patent infringement attorneys at Cohen IP. Feel free to call our office for a quote for your design patent application or to speak to an experienced attorney about your infringement case.