When we think of patents, many people think first of utility patents — the kind that protect the function of an invention. But there’s another type of patent that recently made news headlines that could be crucial to protecting your intellectual property.

In Automotive Body Parts Association (ABPA) v. Ford Global Technologies, Ford was trying to block the ABPA from making replacement parts for Ford’s F-150 hoods and headlights, both of which are protected by design patents. The ABPA was trying to limit the reach of the patents, arguing that they were largely functional in nature — something that, if proven, can preclude design patent enforcement. The Federal Circuit court ruled in Ford’s favor.

For replacement parts manufacturers and consumers alike, it wasn’t the best news. Everyone knows that you can purchase replacement parts cheaper from a third-party manufacturer than you can from the car’s manufacturer. 

But for Ford and other manufacturers of products with a large market of replacement parts (e.g., inkjet printers, construction equipment, etc.), this win greatly increases the potency of a design patent portfolio used to corner the market on replacement parts. While car owners may cringe at the inevitable increase in auto repair costs, this is a totally legal and very effective strategy for the manufacturers.  

Many of our own clients have products where replacements parts do exist and there is significant revenue to be made from those replacement parts. These clients are turning to design patents to gain a larger share of the marketplace. Read on to find out if a design patent is right for your IP.

Utility vs. Design Patents 

Utility patents protect the function of a product, such as the interaction of gears within a clock, whereas a design patent primarily protects the aesthetics, such as the shape of the hands on the clock. 

Design patents are not intended to offer protection of functional aspects of a product. But there are many situations where aesthetics and functionality overlap, and thus situations where design patents can legally cover functional aspects of a design (where the design is not primarily functional). 

The law comes down to a question of whether or not the design is primarily functional. As long as there’s a significant overlap between aesthetics and functionality, there’s a reasonable chance that the design patent will stand up in court. 

Examples of Design and Utility Patents In Use

Design patents are very often used to protect consumer goods, when aesthetics play a big role. Look at the beverage industry. The shape of your bottle can make a big impact on who buys your product versus the bottle that’s sitting next to it. In that case, the shape of the bottle has little functional advantage over its neighbors, but the aesthetics can make or break a brand. That would be a perfect instance where a design patent would be utilized. 

Going back to the auto manufacturing example, a manufacturer would likely use a utility patent to protect aspects of a vehicle that are functional, such as a more efficient engine or a new lane-departure sensor. The same manufacturer might use design patents, though, to protect the shape of a car’s windows, wheel designs or the shape of the fenders. 

Interestingly, all of these shapes can also have functional benefits such as increased visibility for the driver, reduced weight in the wheels, and increase laminar flow for the fenders. In the case of electric cars, the shape of the vehicle might serve both aesthetic and functional purposes. The shape of an electric car plays a big role in increasing laminar flow and reducing drag, thereby improving gas mileage. So, you could have utility and design patents covering the shape of a vehicle. 

Limitations of Design Patents in Action 

  • Utility patents take longer and cost more to acquire. They do, though, make it more difficult for competitors to “design around” your product.
  • Design patents are faster and cheaper to acquire, but also easier to design around.

Related: What Overseas Lawyers Need to Know About Filing U.S. Trademark Applications

Depending on your industry, a design patent might not even be a question. For some of Neugeboren O’Dowd’s clients, like those in software for example, the focus is primarily on utility patents. In software, there’s often little to protect with a design patent anyway. 

For some software clients, though, the user interface is very important. Look at the aesthetics of the iTunes interface, the Netflix home screen, or the smart display of an LG or Samsung TV. Some of those have highly visible and desirable aesthetic interfaces, which could be protected with a design patent. 

The tricky thing is, unlike with utility patents, it doesn’t take that much of a design change to get around a design patent. In some cases, a competitor could change minute details to mimic the look of your product or interface. They would then benefit off the goodwill and brand recognition of your user interface. 

Design Patents Abroad 

In the consumer product space, design patents have a much greater role. This is especially true as you deal with products that have a lot of knock-offs coming out of low-cost manufacturing locales like China. 

Related: Update on China’s Amended Trademark Law

A design patent can be a really effective means of stopping those types of infringers. In many cases, the infringers are creating near-perfect duplicates. They aren’t even trying to design around your product. They’re knocking off hundreds of different products. If they run into an infringement issue with one, they’ll just toss that product and focus on the others.  So, design patents can be very effective against this type of copycat. 

In comparison, international utility patent families can often cost upwards of $50,000 to over $100,000. An international design patent can be a much more affordable way for a business to protect their product. 

Do You Need a Design Patent?

When it comes to protecting your IP, a design patent could be useful, especially if you’re selling a consumer product, on a limited budget, or worried about IP protection on an international scale. Design patents can be a highly effective addition to your portfolio if you stand to lose revenue from third-party knockoffs, rely on replacement parts revenue, or if your product relies heavily on aesthetics rather than function.