To protect and serve

Article  \  26 Feb 2013

When innovators look to protect their creations, more often than not they consider patent protection, but ignore design protection. 

This is understandable. Well prepared patents can provide strong IP protection. Design protection is often perceived as weaker and less useful. It's generally not as broad as patent protection. But design protection can still provide useful IP protection, especially if used strategically or for visual features that depart significantly from the norm. Take the Apple v Samsung patent case.

The recent Apple v Samsung case in the US provides a good case study on how design registrations can be a useful part of an IP protection and enforcement strategy. Apple has successfully asserted some of their design registrations (among other IP protection) against Samsung. Those design registrations protect, among other things, rounded corners, a "home" button and icons on an electronic device - fairly standard features on many smartphones now. As a result there is consternation in cyberspace that Apple are able to stop competitors using such features, features which many argue are not particularly special. So how did Apple manage to obtain and use design registrations so effectively? Well, they understood the design registration system and used it to their advantage. Easy.

First, Apple would have understood that obtaining design protection for a product can be relatively easy, and generally easier than obtaining patent protection. For patent protection, the invention must have one or more functional features that are inventive over all existing technologies. This can be a high threshold to meet. In contrast, obtaining design protection only requires new visual features - such as shape or configuration - of an article. While the exact requirements differ from country to country, and depend on what other designs exist, the level of newness required for a design registration does not necessarily have to be significant. This makes the rounded corners or the home button of an electronic device fair game for design protection (assuming such visual features are new). Apple would have realised that ostensibly simple visual features can still be protected by design registrations. Filing a suite of them can provide good coverage. 

Second, Apple probably also understood that their ostensibly simple visual features were actually significantly different (in a design sense) compared to incumbent devices of the day. Bloggers are saying that rounded corners, home buttons and icons are common place now so are not new at all, not even the little bit required by design registrations. While such features are now commonplace, the newness of a design registration is judged as at its filing date, not the date the design registration is asserted. The Apple design registrations in question were filed between 2004 and 2007 when smartphone technology was less developed. Back then, electronic devices were more "clunky" visually and tended to have keypads rather than touch screens. Realising where smartphone technology might end up, Apple perhaps decided that their "simple" features were actually a departure from typical devices and worth protecting.

Third, Apple would have understood that design registrations can be easier to interpret, which can make them a valuable weapon when chasing alleged infringers - especially when dealing with consumer products and lay audiences such as juries. Unlike patents, which define inventions using legalistic and wordy definitions, designs are defined by a set of line drawings that depict what is being protected.  Drawings provide a clear deterrent to competitors, who may not be savvy enough to understand patents, but can understand drawings. 

This characteristic of design registrations can lead them to being more effective and easier to enforce. Design registration scope is not always clear cut and still needs expert interpretation, but at least at first glance most lay people obtain a fairly quick picture as to whether they might have an infringement problem by comparing their product to the drawings in the design registration. This can lead to quick dispute resolution, before descending into complex litigation. Often, simply sending a copy of the design registration to a competitor can clarify the matter and deter them. And where such competitors choose to proceed regardless, when it comes to trial, non-expert jurors or judges who are non-technical are more likely to understand the scope of protection provided by a design registration. This was seen inApple v Samsungwhere non-expert jurors could compare the phones in their pockets to the Apple design registration drawings. The jurors would have intimately known and understood the visual features of the devices in question.

I'm not making any conclusions on the merit of the jury decisions inApple v Samsung. However, I do think it shows how Apple's knowledge and strategic use of the designs system provide effective IP protection. Next time you want to protect your innovations, consider whether design registrations as part of your IP protection strategy could be effective for you. Design registrations can be relatively cheap and easy to obtain, and are more "user-friendly" to interpret and assert. Used intelligently, design registrations could on their own account provide an effective deterrent tool to competitors. 


An edited version of this column appeared in NZ Marketing magazine, Mar/Apr 2013.