by Ryan H. Flax, Esq.
(Former) Managing Director, Litigation Consulting
A2L Consulting

In September I predicted that a patent renaissance was on its way and that it would focus on U.S. design patents.  I saw how Apple wielded its design patents covering the look of its iPhone operating system interface against Samsung to the tune of over $1 billion and found it fairly compelling.

Today, President Obama signed the Patent Law Treaties Implementation Act, which, according to the White House, “amends Federal patent law to implement two treaties:  the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which would allow an applicant to obtain an international registration of an industrial design with a single application; and the Patent Law Treaty, which would harmonize and streamline various formal procedures related to patent applications and patents.”

This new law, which amends the America Invents Act – aka the new Patent Act - extends the term of design patents filed after today to 15 years (up from the current 14 years), allows U.S. patent applicants to file an international design application before entering the national stage in U.S. and foreign countries (just like regular patents), and establishes provisional rights for design patent holders to seek damages for pre-issuance infringement if the related international application published before the U.S. design patent was granted.

So, we see some rather dramatic broadening of the property rights accorded a U.S. design patent holder.  This will only make design patents more attractive to U.S. innovators and international innovators seeking to market their wares and protect their product designs in the U.S.

As I discussed in my prior article, it appears that design patents can be as monetarily valuable as regular utility patents and, maybe, even more so because design patents lend themselves to proof of infringement in litigation. 

“Easy to explain” adds value. 

In court, to prove design patent infringement, you must persuade jurors that the accused infringer has copied your patented aesthetic design.  This is a far simpler task than teaching a jury about some obscure and complicated technology (that may provide only a minute fraction of the overall functionality of the infringing thing) and then persuading that jury that there is indeed infringement of a utility patent.

Furthermore, you won’t have to deal with the differences between direct and indirect infringement, doctrine of equivalents, or Section 112 (enablement and disclosure) issues at trial with a design patent.  These are just a few of the complicated issues of law intertwined in typical, utility patent litigation.

“Easy to build a story around” adds value.

It’s also easier to establish infringement of a design patent purely visually, which is likely how your jurors learn.  You may not even need to say a word to prove your infringement case if your litigation graphics are strong enough.  Your jurors will see for themselves how similar the infringing thing and your patented design are.  They’ll just “feel” like there’s infringement.

The entire process is streamlined for a plaintiff that owns a design patent.  You may not get $1 billion in damages every time you sue over a design patent, but it’s not impossible.  The renaissance is just beginning.  Let’s see how interesting it gets.

Other useful patent litigation related materials on A2L Consulting's site:

• Free Download: The Patent Litigation Trial Presentation Toolkit
• Our design patent litigation renaissance prediction
• 11 tips for patent litigation trial presentation
• Apple v. Samsung: 1) storytelling will probably work 2) storytelling proven to work!  3) Reexam article
• Mock Markman hearings
• Observations of a patent litigator turned to a litigation consultant