leveraging design patents to increase value in your medical device patent portfolio - by michael...

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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

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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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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.

leveraging design patents to increase value in your medical device patent portfolio - by michael...

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