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© Michael A. Shimokaji, 2014
The contents of this article represent the opinions of the author and not those of the
author’s law firm or clients.
LEVERAGING DESIGN PATENTS TO INCREASE VALUE IN YOUR
MEDICAL DEVICE PATENT PORTFOLIO
Medical device companies rely primarily on utility patents to increase
the value of their patent portfolio, as well as defend against patent
infringement claims. But in designing medical devices, much attention is
given to how a device looks aesthetically – from the perspective of a doctor
and a patient. Rightly so - no one wants to use an ugly-looking medical
device.
A design patent, according to the patent statute, covers an “ornamental
design for an article of manufacture.” According to the US Patent &
Trademark Office (USPTO), a design “consists of the visual characteristics
embodied in or applied to an article.” Further, according to the USPTO, the
design can “relate to the configuration or shape of an article, to the surface
ornamentation applied to an article, or to the combination of configuration and
surface ornamentation.”
In sum, a design patent “protects the way an article looks,” while a
utility patent “protects the way an article is used and works.” This is how the
USPTO makes the broad distinction. Importantly, as the USPTO also points
Michael Shimokaji
www.shimokaji.com
949-788-9968
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© Michael A. Shimokaji, 2014
The contents of this article represent the opinions of the author and not those of the
author’s law firm or clients.
out, “articles of manufacture may possess both functional and ornamental
characteristics.”
But – where the design is primarily dictated by considerations of
functionality, a design patent is not proper.
The Federal Circuit has recognized the value of design patents in the
context of medical devices. The court pointed out, in In re Webb, where the
design covered a femoral hip stem prosthesis that design patent protection is
appropriate if at some point in the device’s commercial life its appearance is
a matter of concern. For example, according to the court, the fact that a device
is to be displayed for sale could have a significant influence on its ultimate
design.
In the medical device world, there are often many devices using similar
technology to achieve a similar result. This can prevent the maker of a “me
too” device from obtaining utility patent protection. But new ornamental
aspects to the shape of the device may provide an avenue for design patent
protection. A new shape, for example, may give the device a sleek appearance
in comparison to the old, bulky look by competitors. The sleek appearance
may not achieve any functional improvement, but the sleek look may be used
to differentiate the device from those of competitors – hence, new sales.
Another scenario may involve the same device from the same maker,
but in a newer version. In that case, the device keeps the same functionality
but looks better. From a marketing perspective, the device maker can
advertise that the great functionality that consumers have come to expect are
still found in the device. Nevertheless, the device maker might advertise the
product as new and improved – hence, more sales.
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© Michael A. Shimokaji, 2014
The contents of this article represent the opinions of the author and not those of the
author’s law firm or clients.
PRACTICE POINTER:
Design patents are relatively inexpensive and faster to obtain when
compared to utility patents.
In situations where a device may have a relatively short sales life,
design patent protection may be a route to increase the value of the device
maker’s overall patent portfolio. Or in situations where the technology is
already crowded by existing utility patents, design patents can be a way to
carve out an area of exclusivity.