Thinking Outside the (Utility Patent) Box – Don't Overlook Design Patent Protection in the Life Sciences

August 30, 2019 – Article

Design patents are very different from utility patents in that design patents only protect the ornamental features of an invention. In contrast to utility patents, the design is defined in scope by the content of the drawings rather than the words of a set of claims. Further, design patents have a 15 year term, as opposed to 20 years from filing for utility patents.

The USPTO issues about 25,000 design patents each year, making them by far the minority of patents pursued and granted. Regardless, design patents have gained more recognition in recent years, in part based on the large damages awarded in the Apple-Samsung smartphone patent wars which included several design patents. Thus, stakeholders should not overlook whether or not their technology may be amendable to design patent protection.

Notably, and contrary to instinct, an ornamental design that is worthy of design patent protection does not have to be aesthetically pleasing. Design patents can cover any design as long as it is not dictated by the product’s function.

Life sciences areas where design patent protection may be appropriate include, but of course are not limited to, bone or dental implants, diagnostic devices, laboratory consumables, prosthetics, cosmetic skin treatment devices, medical/laboratory protective clothing, and graphical user interfaces in software components. 

Some recent examples of design patents granted in the life sciences, illustrating a subset of the vast array of patentable subject matter, are shown in the below table:

Obtaining design patents tends to be cheaper, quicker, and easier than utility patents. That being said, careful consideration should be given to the scope of the design patent, and irrelevant details should not be included, because those provide loopholes for potential infringers in the future.

Design patent coverage can complement utility patent coverage and strengthen a portfolio overall because competitors will have to consider the appearance of a particular product in addition to functionality that may be covered by a utility patent. In addition, a design patent can be filed to cover the latest iteration of a product, extending coverage past the life of a utility patent.

Accordingly, medical device companies that have invested time and money in designing products should consider whether or not a design patent may be appropriate, particularly if the product has features that may be difficult to protect with a traditional utility patent.