Multiplicity of Design Patent Rights

By Dennis Crouch

The number of design patent applications continues to rise. At least a portion of that rise is explained by an increase in the sophistication of design patent applicants. Rather than filing a single design patent that covers a new product release, the experts file a group of design patent applications that each claim a small portion of the overall design. Because a design patent claim is defined by the submitted drawings, each patent application will have slightly different figures. Often, the only change needed is to change portions of the drawing to either solid lines (claimed) or dashed-lines (unclaimed). This strategy has two beneficial results for the patentee: (1) competitors who copy only a portion of the product (suggestive free-riding) will still infringe; and (2) a patentees product design will still be covered by patent rights even after making small changes to the design. A second somewhat less common approach is to also file design patents on features that are closely-related but different from the patentee's actual product design. The intent is to create additional market distance for the patentee and is most effective in markets where direct knockoffs are common.

The images below come from six Gillette design patents all filed on the same day in 2012. The first drawing looks particularly at one of the designs – can see the solid lines that represent the claimed portion?

 

Gillette patents

D0674142

D0674141

D0674140

D0674139

D0674138

D0673730

   

16 thoughts on “Multiplicity of Design Patent Rights

  1. Quandary may be inaccurate, how about thinking too much— but not about the logic of the original topic. The razor as a complete product line is covered by what I will naively call modular Design patents. I believe there are or will be other Design Patents that claim the handle and then other parts. This puts a spin on the “design as a whole” or a “substance” for judging similarity. That doesn’t bother me as it makes the claims cleaner, but shows the inadequacy of a system that must be gamed to get it to work. What does work is that I can see that these products are well designed, not obvious (to ordinary designer me), with my experience I can interpret the sophisticated surfaces and forms (which may not be readily obvious to or understood by non designers) and I can see what is claimed. Overall I am pretty impressed with the product design and the Design Patent logic.

    There are also a couple of good examples in the larger image above that could demonstrate why In re Owens is nonsensical.

  2. This leads to a quandary, there is a design dependency/independency that everyone really knows but, these are supposed to stand alone, am I right? There are plenty of examples of these exact shapes in other contexts and it is nonsensical to really claim that in of themselves they can be “free ridden”

    What’s the “quandary”?

  3. I have some industrial designer observations.

    This shows foresight in thinking strategically and employing contingency options by planning the patent application process. There may also be a third reason of efficiency and risk management by segregating potential contention, especially as this applies to a product line where time to market matters and product life is limited.

    Patents -42 and -30 claim only a square ended detail or slot. I do strongly suspect this detail as shown is purely (100%) functional. my clues are that it does not speak the same “design language” of an otherwise comprehensive industrial design and begs me to consider if it is merely a last minute engineering fix. It could clearance for better articulation or maybe mitigating a scratch mark in assembly. I guess I would be presumed wrong at this point though.

    The other Patents claim what look like be functional “pointers” for an adjustment feature. Things like this may undergo design refinement after consumer feedback. These show very well the inseparable integration of form and function in the context of this sort of design, whereas -42 and -30 do not; especially in the context of the overall design context.

    This leads to a quandary, there is a design dependency/independency that everyone really knows but, these are supposed to stand alone, am I right? There are plenty of examples of these exact shapes in other contexts and it is nonsensical to really claim that in of themselves they can be “free ridden”. Look at -42 and -30 again.

    For what its worth, these all use the dash dot dash line to delineate the merging of the claimed area with its context, that has to be considered a little bit fuzzy to really make sense. But the cross hatching?

  4. Post got eaten.

    Short answers:

    1) to satisfy the “how to make” requirement of 112

    2) either incredibly narrow scope of analogous PA, or failure by the examiner to make a justified “de minimis” obviousness argument

  5. I might take a shot at answering these 2 questions, after I have finished representing actual clients, and after I have taken a shot, or several, of certain distillates.

  6. I see it now. Unf——believable.

    My questions stand in revised form:

    (1) what is the point of including any part of the rest of the manufacture if none of the rest of the manufacture is claimed? The claim is infringed by a toothbrush with the same “ornamental” design on it, no?

    (2) how is it possible in 2013, in view of thousands of years of prior ornamental designs on manufactures, for an ornamental “design” such as those claimed here to be non-obvious?

    I’m looking forward to clear, thoughtful and direct answers from the “experts” on these questions, including acknowledgement of the scope of the claims.

  7. MM,

    You’re confused. These Design patents do not cover handles. I just looked at a high dpi zoom of them and D674141 appears to cover the top two lines of a shallow triangle below a reversed J. I’m going to try and infringe this below in ASCI…

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  8. What are some other good examples of design patents which only claim parts of an overall object?

  9. how is it possible in 2013, in view of thousands of years of prior ornamental designs of hand-held devices, for the handles claimed in these drawings to be deemed non-obvious?

    There can’t be that much art on handles with so many unclaimed blades attached.

  10. “None of the broken lines forms part of the claimed design.”

    It’s impossible to tell what lines are broken and what lines aren’t broken from those figures. I assume better images are available on PAIR?

    I’ll also throw a couple questions out there: to the extent what is being claimed is only the ornamental shape of a handle (not including the relatively complicated region where the blade attaches), (1) what is the point of including any part of the rest of the manufacture; and (2) how is it possible in 2013, in view of thousands of years of prior ornamental designs of hand-held devices, for the handles claimed in these drawings to be deemed non-obvious?

  11. See the miracles of innovation that patents spawn! – without patents, we would never have had the 5 blade razor. I say the more blades the better – I can never get a close enough shave. Would 6 blades be obvious with the PTO?

  12. Those Gillette razors with the 5 blades are a total ripoff. The ones with 3 blades work just fine.

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