Share This Article


Businesses and Inventors Should Consider Design Patent Protection Due to Right to Recover Infringer’s Profits

Because design patents provide for significantly greater damages when infringed than utility patents, inventors and businesses should always consider seeking a design patent to better protect their interests and ward off potential infringers.

Unlike utility patents which protect the functional aspects of an invention, design patents cover the ornamental designs of articles of manufacture (see Recent Design Patent Cases Clarify Scope, Expand Protection of Design Patents). Although design patents share many provisions of the federal patent statute with utility patents, the damages available for infringement of a design patent are different. Under federal patent law, the owner of a utility patent is entitled to recover “damages adequate to compensate for the infringement, but in no event less than a reasonable royalty” for infringement of a utility patent. In contrast, the federal statutory damages provision for design patents allows recovery of the infringer’s total profits.

The Federal Circuit recently remanded a case for a new trial on damages because the original damages award did not account for all of the defendant’s profits, as required by the statute. Nordock v. Systems Inc, Nos. 2014–1762, 2014–1795 (Fed. Cir. September 29, 2015).

In Nordock, the design patent at issue covered the ornamental design of a lip and hinge plate for a loading dock leveler unit. The jury found that the patent was valid and infringed, but awarded only $46,000 in reasonable royalty damages. On appeal, the Federal Circuit reversed and ordered a new trial on damages, finding that the district court had improperly calculated the damages by requiring that damages be apportioned between the infringer’s profits associated with the lip and hinge plate and the infringer’s profits for the entire dock leveler unit. As in the recent Apple v. Samsung case, the Federal Circuit held that the patentee is entitled to the infringer’s total profit from the article of manufacture bearing the patented design. This holding could boost the total damages to about $600,000.

Design patents are often overlooked because they don’t cover the functional aspects of an invention. They can, however, be an important part of a comprehensive intellectual property portfolio. If you would like to discuss the benefits of design patent protection, please contact your Davis & Kuelthau attorney.