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 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.

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.

© 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

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