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Industrial Designs – Not Just Another Pretty Face

Industrial design registrations, AKA design patents in the U.S. and some other countries, are often seen as the “poor man’s patent” – something to consider only if you’ve got a great invention, but not the money to pursue a “real” (utility) patent. But as has become obvious over the past few years, industrial design registrations can have sharp teeth.

An industrial design can be used to protect features that aren’t even protectable under a utility patent. An industrial design protects the visual features of a product, defined as the “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye” (Industrial Design Act, R.S., c. I-8, s. 2), while a utility patent protects its functional features or the method of making or using the product. Something can look interesting and appealing to the consumer, without that feature being useful and patentable. A really simple example is a design on a piece of silverware or a dinnerware pattern – couples often spend hours pondering which silverware pattern or china pattern to add to their registry. This shows how important the visual appeal of such a design is, but whichever pattern is chosen, it is not likely protectable by a utility patent.

Smartphones and tablets are very complex examples on the other end of the spectrum, as we’ve seen with the ongoing litigation between Apple and Samsung. While much of the press coverage simply refers to “patent litigation”, Apple is asserting design patents as well as utility patents. The design patents being asserted cover everything from the rounded rectangular shape of the products (U.S. Design Patent D504,889), to the ”home” button, speaker hole and other physical aspects of the front screen (U.S. Design Patent D593,087), the dark edge-to-edge front phone surface (U.S. Design Patent D618,677) and the icon layout on the interface screen (U.S. Design Patent D604,30). The most notable result of the lawsuits (taking place in more than 10 different venues) thus far has been the $1.05 billion jury award in the Northern District of California (since reduced to a mere $889 million following an appeal and a new trial relating to certain designs), but there have been injunctions granted preventing Samsung from selling various products in Germany, the Netherlands and Australia.

As a benefit, an industrial design registration may even be easier to enforce in some cases than a utility patent. It can be relatively straightforward for a judge (or jury in courts where decisions are entrusted to them), regardless of knowledge or experience with a particular product or technology, to look at the accused design and the drawings contained in the industrial design registration, and determine the visual similarity of the designs. Contrast this to utility patent infringement cases where details of technologies people may not have heard of, never mind actually seen or used, have to be broken down, explained and compared, using terminology that might likewise be familiar only to the person skilled in the art.

So an inventor should not necessarily put all of his or her eggs in the utility patent basket – if the eggs look different than everyone else’s, an industrial design registration or design patent may be just the way to protect those eggs as completely as possible.