Why the Design Patent Process Needs Reform
HLF has been a vocal advocate for design patent reform, through our amicus brief filing in the Apple v. Samsung litigation in the U.S. Court of Appeals as well as our latest opinion piece on the topic in Roll Call. As Congress continues to examine patent reform and the Patent and Trademark Office (USPTO) accepts public comments on patent quality, we want to point out a piece by Gary Griswold, an intellectual property expert that explains an approach to remedying outdated design patent laws.
Griswold’s latest piece, featured in the Intellectual Property Owners Association Law Journal, examines reforms for the portion of the U.S. Code that oversees design patents: 35 USC 289. Design patents cover the ornamental features of a product, whereas utility patents cover process and function. The U.S. has reformed its patent application and award processes numerous times in recent decades and Congress is currently looking to reform it further. Design patents have been long overlooked in patent system updates, and as Griswold describes, ignoring them further will cause significant damage to companies and consumers.
First and foremost, the design patent application process should be more open and transparent. Unlike utility patents, design patents do not have pre-grant publication, which makes it nearly impossible for third parties to file comments that could improve a patent. Design patents are made public when they are issued, which can cause market confusion and catch innovators, manufacturers, and consumers by surprise. Utility patents have a much smoother system that allows for six months of public comments – keeping the process open and markets adjusting accordingly.
Transparency isn’t the only reform design patents need. Under current law, a design patent holder can be sued for infringement and forced to pay up to total profits of the alleged infringing product. In many cases, the design patent in question doesn’t drive sales of the full item, which begs the question of why an infringer should be forced to pay profits of the entire product? This is not how utility patents work for a reason: if abused, it’s damaging to companies and innovators.
As Griswold writes, “if the patented design is not substantially the basis for the customer demand for the entire article, then the patentee would be left with the same remedies available to utility patents […], lost profits and/or reasonable royalty (pp. 4-5).” HLF’s comments in our July 2014 amicus brief in the Apple v. Samsung litigation supports this argument.
As Congress continues to debate patent reform and the USPTO looks at ways to enhance patent quality, HLF urges policymakers and regulators to also think about design patents, as they play a critical role in technological advancements. Without more transparency, pre-grant publication, and a more rational interpretation of damages, the current design patent process is going to cause harm as companies find loopholes in the outdated system.