Companies have long relied on utility patents and trademarks to protect their innovations. But companies should also consider adding design patents to their intellectual-property (IP) strategy. Finnegan’s Virginia Carron discusses the importance of design-patent protection for companies that make products whose appearance and performance both matter.

What is a design patent?

A design patent is a form of IP that protects manufactured goods that are new, original, and ornamental. Design patents let the patent holder exclude others from making, using, selling, or importing products that use the patented design or a design that is substantially the same. Unlike utility patents, which generally cover how something works, design patents protect how something looks. Thus, they are especially useful where consumers purchase products not only for performance, but also for look and feel.

Why might a company want design patents?

Design patents can protect a company’s brand and customers against potential harm from counterfeit products. They can also be used to protect a company’s market share for spare parts, such as automobile “crash parts,” including bumper covers and headlamps, or replacement heads for power toothbrushes.

Further, companies can incorporate design patents as part of a larger, layered IP strategy. Utility patents protect the functional components, manufacturing methods, and methods of use, while design patents protect ornamental design aspects. For example, over the last 40 years, Dyson has obtained over 250 utility patents and 125 design patents using a layered IP strategy. Other companies using this strategy include Samsung, with over 59,000 utility patents and 4,400 design patents during that same time period, and Braun, with over 1,200 utility patents and 350 design patents.

Dyson designs products for the vacuum, fan, heater, and dryer industries. Dyson’s upright, canister, handheld, and cordless vacuums range in price from about $200 to $650. Compare these prices with those advertised by TTI Floor Care, North America’s Hoover brand, whose similar-type vacuums range from about $60 to $300. Despite the considerable price difference, Dyson held a 5% share of U.S. vacuum sales in 2012 and saw sales increase 4% — the largest growth among market-size vacuum cleaners. The premium that consumers are willing to pay suggests that they purchase Dyson products not only for their exceptional performance, but also for their appearance.

Can designs be protected outside the United States?

Yes. In fact, there continues to be tremendous growth in worldwide industrial-design filings. According to the World Intellectual Property Organization, China saw the greatest number of design filings in 2012 — a 26.1% growth rate from 2011. The United States also experienced a substantial increase in design-patent filings in 2012, up 7.7% from 2011. Overall, estimated design registrations in force worldwide grew from 2.46 million in 2011 to 2.71 million in 2012.

How might a company use its design patents?

A common way to use design patents is to assert them against copycats. And if a company decides to register or patent its designs internationally, they can use customs agencies in certain areas, including the European Union and China, to prohibit the importation of products that infringe on their protected designs. Nike has publicly touted the effectiveness of its cease-and-desist letters to importers of counterfeit shoes. Dyson has asserted its design rights in court against companies such as Euro-Pro and Cornucopia Products. In the well-publicized Apple vs. Samsung case, Samsung was ordered to pay Apple almost $930 million for infringing Apple’s patents, including design patents. Companies can also extract value from their design patents by licensing them to others, such as authorizing spare-parts makers.

When and how should a company proceed with filing a design-patent application?

In the U.S., a design-patent application cannot be filed more than one year after public disclosure of the design. But to preserve international filing options, a company should file a design-patent application before the design is publicly disclosed, and as soon as possible after finalizing the commercial embodiment of the design. U.S. design-patent applications have unique requirements, so it is best to retain competent counsel with experience in this area.