Updated November 5, 2020:

What Is Design Patent Infringement?

Design patent infringement occurs when a company or person violates a design patent's terms. A design patent protects a manufactured product's ornamental features. To claim infringement, you must prove that an ordinary observer wouldn't be able to tell the difference between a patented object's design and an accused object's design when both designs are side by side.

High-Profile Cases of Design Patent Infringement

Design patents have existed as long as utility patents, patents that protect a product's unique functions. Courts have begun awarding the plaintiff damages by making the standard for proving that infringement on a product's ornamental features has taken place. In 2013, the popular electronics manufacturer, Apple, sued Samsung Electronics Co. Apple claimed that Samsung violated Apple's design patent on its iPhone design.

Apple brought up violations of certain features protected under the iPhone's design patent. The jury favored Apple in this case, and Apple received an award of $290 million in damages.

After the Verdict

In late 2016, the Apple v. Samsung design patent infringement case came to the U.S. Supreme Court. In the case, Apple argued that damages should have been paid on the profit from the phone. As part of a unanimous decision, the U.S. Supreme Court justices overturned the earlier decision made in Apple's favor. The court's opinion stated that an award for damages for design patent infringement may be restricted to profits that a company can attribute to a part of an article of manufacture, not the entire product itself.

How Does This Case Impact Design Patent Infringement Today?

Design patent infringement can be a real issue for many inventors. When you bring a court case against someone who violates your design patent, you must show the value of your design to present a stronger case.

A strong case should include three major elements:

  1. The scope of the design protected in the design patent

  2. The design's importance to the overall product

  3. The design's uniqueness as related to the overall product

Damages are another part of a design patent infringement case. Figure out how much money you might have lost to the person or company that violated your design patent. Coming up with a reasonable amount of money loss can help a jury understand the financial hardships you faced.

Tests to Determine Design Patent Infringement

The two standard tests for design patent infringement are:

  • "Ordinary Observer"

    • This test looks at whether an ordinary person (not someone who is a design expert) can see a definite similarity in the designs of two objects. Think of someone standing in a store trying to decide between two items to buy. If that person can't tell a difference when looking only at the outside design, you may have a case for design patent infringement based on substantial similarity.

    • An "ordinary observer" is important because a patent holder can't look at something objectively. However, an outside observer who has no training in design can look at objects without any bias.

  • "Three-Way Visual Comparison Test"
    • The three-way visual comparison test uses three different examples for comparison. You place the patented design on one side, the accused design in the middle, and other designs that look like the closest prior art (designs produced before a patent filing date) on the other side.

Since these tests rely so much on how any one person looks at something, you could find your results of these tests challenged in court.

Why Is Design Patent Infringement Important?

When you create a product design, you need to know if you're infringing on someone's intellectual property for a design patent. If you hold a design patent, watch for others who might try to copy your design.

When inventors or designers are thinking about applying for a design patent, they should look for designs that already exist. Some people choose to do this research on their own. You may be limited to how much information you can find, though. Patent lawyers can help you make more detailed searches.

If you have a unique design for a product, you need to make sure no patent already exists on a similar product. If that design does, you'll spend too much time and money moving forward with your idea. You may also put yourself at risk of infringing on a design patent. Make sure you search for prior art.

Those who hold design patents must also watch out for potential infringements. If a company or person violates your design patent, you have legal rights.

Look at the merits of the claim

The merits will support your case in court. Keep detailed records and present your case in a way that's easy to understand.

Ask yourself if your claim is valid

You will need to support your claim that someone else infringed on your design patent. You may find help working with an independent design expert who will support your claim. For some high-profile design patent infringement cases, independent experts played major parts in the cases' outcomes.

You should also review the value of the design. Include details about how valuable that design is to your customers. Online comments, reviews, letters, or notes will help prove design value.

Review changes to past court rulings and standards

Before taking legal action, do a thorough prior art search. As a result of the Apple v. Samsung case, the U.S. Supreme Court also took away several earlier standards, including non-trivial advance and point of novelty. Non-trivial advance focuses on how significant changes are when they are compared against another design. Point of novelty, a test used in earlier cases, required proof that a design accused of design patent infringement has several unique aspects that set it apart from prior art.

What Could Happen When You Commit Design Patent Infringement?

The penalty for design patent infringement depends on which side you hold in a case.

  • If you commit design patent infringement, a patent holder may sue you for damages. The damages might include money the patent holder lost because people bought a copied product. Damages could also include financial distress the company faced during the time the copied product was for sale in the marketplace.
  • The patent owner also receives a royalty. Role reversal is one tool used to figure out royalty amounts and damages due. Patent lawyers put themselves on the other side of the case. In doing so, they consider the opposite standpoint and what claims might be made to reduce the royalty payment. This exercise is useful to prepare to fight against a design patent infringer.

If your company infringes on a design patent, your company might be sued in court. A lawsuit could hurt your company's reputation and cause your company to lose loyal customers.

On the other side, those who are victims of design patent infringements have a few options:

  • Send a cease-and-desist letter to the person or company infringing on the patent.
  • If a company or person continues to infringe on your design patent even after you send a letter, you can consider legal action. Work with a patent lawyer with experience in design patent infringement. Your lawyer can present a case that shows exactly how a company or person infringed on your design patent.

Common Mistakes

If you don't search for patents well before producing a new design, you may commit design patent infringement. Free online resources, such as the Google Patent Search, are helpful, but you should use them as a starting point for further research.

If you're suing someone who infringed on your design patent, you have only one chance to present your information in a case. Working with a patent lawyer can ensure you have the best representation possible.

Frequently Asked Questions

  • How do I know if someone is committing design patent infringement?

When you hold a design patent, you want to be sure you protect your patent by working with a patent attorney. Your lawyer can help you with extensive searches to look for potential infringement cases.

When looking at a design patent infringement case, you'll want to think about two areas: a single reference and a supporting reference. Find a single design characteristic, such as a handle or a fastener, that is the most similar to the patented design. This characteristic will be the primary reference for the infringement. After you establish the single design characteristic, use other references to support your claim.

  • How do I know if I am committing a design patent infringement?

If you have an idea for a design, do your research. Before you introduce the design, search for similar products. Use the United States Patent and Trademark Office (USPTO) website (uspto.gov) to look for existing design patents. Use various words and phrases in your search to find anything that might resemble your design.

Reviewing the case with a patent lawyer is also helpful. Patent lawyers have access to more resources to search for design patents and can help you avoid legal action for infringing on someone else's design patent.

  • What happens in design patent infringement cases?

The outcome of design patent infringement cases varies. If you have clear evidence that a company or person violated your patent, your lawyer can help you defend your case in a patent infringement lawsuit.

Both copyrights and design patents can protect the design of your product. But proving copyright violation in court can be more challenging. If you want to protect only the design of your item, a design patent is a better option.

  • How do royalties get factored into issues with owners of infringed patents?

To determine royalties, you also need to do some role-reversal thinking. The answers you create from the questions below can help strengthen your infringement argument.

  • What if the patent infringer hired you?
  • What evidence would you present in response to damages, infringement, and case validity?
  • What facts or laws could you use to reduce or remove an award for lost profits?
  • What facts or laws would you present to reduce or remove an award for a reasonable royalty payment?
  • Who funds litigation that may take both many resources and much time to resolve?

Not every person or company can be like Apple and afford to try, appealing, and retrying design patent infringement claims. The patent infringer might also have more financial resources and be less reluctant to settle.

As a result of financial development innovations and the possible awards from claims like those of Apple, some lawyers may be open to the idea of alternate, or contingency, fee arrangements. This decision is not automatic, and many factors influence this shared-risk arrangement. The decision should be considered apart from the merits of a design patent infringement case.

Before you pursue this type of financing, you need to do more than have an infringer you can sue and use to collect an award. You need to think about all of your resources and what you don't have. An infringer could hold out for as long as needed, regardless of how strong you think your lawsuit may be. Your ability to receive innovative financing can be strengthened if you put these factors into focus before you seek any lawsuits.

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