Lessons Learnt from Infringement of Design Patent Cases from the United States: The design of an article of manufacture is represented by its shape or appearance. According to the United States Patent and Trade Organization (USPTO), design is defined as the visual ornamental characteristics embodied in, or applied to an article of manufacture (USPTO, 2017). An article of manufacture can be anything such as a table lamp, chair, tumbler, watch, clock, table, mobile phone, table-mat or any other article of manufacture that has some usefulness. Based on the design features of the article, companies carry on their commercial activities and grow their business in the home country or in other countries in the world. Companies need to protect their invention’s design through a ‘design patent’, which is granted by the government authority of the country or organizations setup for the purpose such as the World Intellectual Property Organization (WIPO) and the European Union Intellectual Property Organization (EUIPO). Design patents are obtained to protect the design from copying or theft by other persons or organizations. The protection to the design through a design patent is available to the patentee for the duration of the validity of the patent. Also, Read: Patent Invalidity Search
What is an infringement of the design patent?
According to Article 35U.S.C 271 ‘Infringement of patent’, any person or organization makes, uses, offers to sell, or sells any patented invention within the United States, or even imports into the United States any patented invention without authority during the period of patent validity, infringes the patent. Infringement is not limited to the invention as a whole. Even if a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process is brought in the USA, the act will be covered under infringement of the patent. Also, Read: Patentability Searches
USPTO does not permit any infringement of the patent. Patent owner is protected from any infringement. Anybody indulging in any form of activity which is covered under infringement, is liable to penalties.
What are the consequences of infringement of patent?
There are serious consequences of infringing a patent. The infringer has to compensate the patent owner as decided by the court. In addition to the monetary losses, the infringer loses his/her image in the market. The financial losses may be huge, which may result in a turmoil in the very existence of the business and may even lead to its closure. The impact of the legal penalties to the infringer and legal remedies to the patent owners can be understood from the decisions of the Supreme Court or other courts. One of the most talked about court cases is between Apple Inc. and Samsung over the design patents, which is discussed here. Also, Read: Freedom to Operate (FTO) search
Dispute over design patent between Apple Inc. and Samsung
Apple asserted infringement of its design and utility patents and dilution of trade dress by Samsung. In 2011, Apple filed suit against Samsung in the U.S. District Court for the Northern District of California asserting Apple’s D593,087, D618, and 677 D604,305 design patents against Samsung’s smartphones, Apple stated that Samsung diluted its unregistered and registered trade dresses that are very similar to the design claimed in its design patents.
A jury found that Samsung manufactured various smartphones that infringed design patents owned by Apple Inc.. The jury awarded the Apple an amount of $399 million in damage, equivalent to Samsung’s entire profit from the sale of its Infringing Smartphones. Also, Read: Patent Landscape Search
The Case filed by Samsung Electronics Co., Ltd. against Apple Inc.
Case details: CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
No. 15-777
Argued October 11, 2016,
Decided December 6, 2016
The Federal Circuit affirmed the damages award and rejected the argument put up by Samsung that the damages should be limited because the relevant articles of manufacture were the front face or the screen rather than the entire smartphone. Disagreeing with this argument, the court held that the components of the smartphones were sold as part of the whole unit and were not sold to the public or consumers as individual items of that product. Samsung’s profit of $339 million during the period of infringing Apple’s patents was awarded to Apple in damages.
Lessons learned from the Samsung v Apple Inc.
Companies should take all care in manufacturing and sale of products that do not infringe on the patented products of other manufacturers of similar products. The importance of design drawings or photographs that are used to describe or represent the invention is of great importance and they should be carefully drawn and checked so that they may not infringe with any patented product. Apple retained the uniqueness of the products in the market and was compensated by the infringer of its patents, Samsung in this case. Companies should learn that infringing a patent willfully or by ignorance is very damaging to their business as has been in the case of Samsung, who has to pay damages to Apple Inc. to the extent of $399 million, the profit they earned during the period of litigation. Further, litigations, whether short or extended, are unproductive, and avoidable loss of resources.
Importance of getting the design patent drawings made by the expert agencies
The importance of correct and intelligent drawings and photographs complying to the laws of the respective countries should be recognized, especially after seeing the decision of the Supreme Court of the United States in the dispute between Apple and Samsung. The drawings and the photographs should be prepared by experienced and knowledgeable persons having access to the latest tools and software, who will produce excellent drawings that can save time in the acceptance of patent applications by the patent examiners. The time and cost of payments made to expert agencies are extremely small compared to the cost of delay in the patenting process. Further, trained and experienced persons can catch any possibility of infringing the patent of other companies and alert the organization in advance to make corrections in the design and manufacturing process in time. This is a great contribution of such expert organizations, which always remain behind the curtain and are not realized by the patent applicants who prefer to save some money in getting the drawings made by untrained and inexperienced persons. Also, Read: Freedom to Operate FTO Search Report Sample
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References
- Design Patent Application Guide _USPTO
- Manual of Patent Examining Procedure, Latest Revision January 2018 [R-08.2017]
- USPTO. 2017.