Freedom to Operate FTO Searches for Industrial Design Patent

In the realm of intellectual property, design patents safeguard the ornamental or aesthetic features of an article. This protection extends to three-dimensional elements, such as the shape of a product, as well as two-dimensional aspects like patterns, lines, or colors. While a design patent focuses on the visual aspects of a product, a utility patent, by contrast, covers its functional attributes.

Design patents are unique in that they emphasize drawings rather than detailed written descriptions. They are typically less costly, involve no post-grant fees, and can be obtained within 3-6 months with proper planning. In the United States, design patents are valid for at least 10 years from issuance, with a recent extension to 15 years for patents filed on or after May 13, 2015. Despite their long history, dating back to the first U.S. design patent granted to George Bruce in 1842, the fundamental nature of design patents has remained unchanged. Iconic examples of design patents include the Statue of Liberty, the Coca-Cola bottle, the Volkswagen Beetle, the Stealth Bomber, and Yoda from Star Wars. Design patents have long been crucial across various industries, including consumer electronics, automotive, apparel, jewelry, and packaging.

Why You Need a Design Patent

Design patents offer several key advantages:

  • Perpetual Trade Dress Rights: They enable the creation of enduring trade dress rights to protect product configurations indefinitely.

  • Protection Against Counterfeiting: They guard against the wholesale copying of product designs by counterfeiters.

  • Prevention of "Compatible" Parts: They deter secondary marketers from producing "compatible" replacement parts.

  • Competitive Edge: They ensure competitors maintain a distinct separation in design, preventing close imitation.

Freedom to Operate Searches: Scope for Design Patents

As the functionality and complexity of man-made devices continue to evolve, design patents are increasingly valuable. Innovative companies are continually seeking to enhance their designs and protect these advancements. Conducting Freedom to Operate (FTO) searches for design patents is essential to avoid infringing on existing patents. For instance, Nike ranked 5th in the U.S. for design patents granted in 2016, with a total of 275 patents issued. Samsung topped the list with 1,629 design patents, while Apple Inc. followed with 433.



The Necessity of FTO Searches for Design Patents

Design patents are crucial not only for protecting unique artwork but also for enabling legal action in cases of infringement. Various high-profile lawsuits underscore the importance of design patent protection and FTO searches:

  • Nikola Motors vs. Tesla: Nikola Motors sued Tesla for allegedly infringing on its design patents with the Tesla Semi, claiming $2 billion in damages. Nikola's patents included designs for the fuselage, windshield, and side door of the Nikola One truck, which were developed to stand out visually and functionally. [Source]

  • Nike vs. Walmart: Nike filed a lawsuit against Walmart for infringing on its design patents related to shoe midsoles. The contested patents were US Design Patent D498914 and D499248. [Source]

  • Michelin vs. Atturo Tire Corporation and Svizz-One Corporation: Michelin accused these companies of infringing on its design patent for tire tread patterns designed to enhance grip on wet roads. The case has since been settled. [Source]

  • Apple vs. Samsung: This ongoing dispute involves Apple suing Samsung over smartphone and tablet designs. Samsung was ordered to pay $399 million for infringing on Apple’s design patents, including D618677 (a black rectangle with rounded corners), D593087 (bezel), and D604305 (colorful icon grid). [Source]

  • Ethicon Endo-Surgery Inc. vs. Covidien Inc.: Ethicon alleged that Covidien’s Sonicision device infringed on its design patents for surgical tools. [Source]

The Role of FTO Searches for Design Patents

Freedom-to-operate (FTO) searches for design patents are conducted to evaluate the risk of infringing on existing patents before launching a new product. An infringement occurs when a product’s design closely resembles a patented design to the extent that an ordinary observer would not easily distinguish between them. FTO searches help ensure that similar designs do not exist that could pose future threats and assist in identifying any closely related designs that should be considered when iterating a new design.

In summary, design patents and FTO searches are vital tools for protecting and advancing product designs. They not only defend against infringement but also help navigate the complex landscape of intellectual property to maintain a competitive advantage.

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