July 01, 2014      

Without doubt, robots today are much more consumer-facing than they have ever been. According to ABI Research, the global market for consumer robots was estimated at $1.6 billion in 2012, and is expected to grow to $6.5 billion by 2017. As consumers, we are already feeling the effects in our everyday lives: a growing number of us employ robots to perform routine household tasks (think Roomba from iRobot) or to entertain our children (think Mindstorms from Lego). In the healthcare realm, surgeons have grown increasingly accustomed to performing robot-assisted surgeries, and amputees now enjoy greater mobility with state-of-the-art robotic prosthetics.

With the robot’s increased visibility, physical appearance — known as ornamental design to patent geeks — plays an increasingly significant role in determining the overall success or failure of robotics products in the marketplace.

A robot’s ornamental design encompasses various aspects of its look and feel: aspects discernible up close (e.g., facial features and facial expressions) and aspects discernible from afar (e.g., shape and color scheme). Because these physical characteristics can strongly influence brand recognition and consumer appeal, developers should consider protecting the intellectual investments that go into creating the successful look and feel of their products.

Design patents (or design registrations as they are known in many parts of the world) protect how something looks. In the U.S., by statute, that “something” must be an “article of manufacture.” An article of manufacture is a useful, manufactured (as opposed to natural) good. Examples include everything from cars and medical devices to belt buckles and plastic water bottles. A design patent may cover the entire article (such as an entire robot) or only an innovative part (such as the robot’s “face” or certain spare parts).

A design patent may cover the shape of an article, its surface pattern, or both. To be deserving of a patent, a design must be original, novel (new) over the existing designs (known as “prior art”), ornamental, and must not be an obvious variant of any existing design.

The “original” nature of a design is typically not an issue, except where a design is deemed to be a “simulation” of something naturally occurring (such as a wood-grain pattern or a person’s face).

The “ornamentality” requirement means that the design must not be solely dictated by function. For instance, a design would not be considered solely functional if the underlying good could be designed in an alternative way, but still function the same. Finally, to pass examination, a design must be clearly and consistently depicted in the drawings (or photographs) of the design-patent application.

Typically, companies with innovative designs obtain design patents for three main reasons:

  1. To protect against counterfeit products intended to confuse the consumer into believing the article is the authentic design
  2. To protect against competitors who sell “after-market” replacement or spare parts
  3. To protect the unique design elements of the authentic product that differentiate it from the competition

In the robotics world, companies may protect their robots for any or all of these reasons.

Like utility patents that may be filed on the functionality of a product, design patents are also subjected to examination by the U.S. Patent and Trademark Office, although the process is much shorter and less expensive. The examination process for a design patent typically takes only 15-18 months.

Once issued, design patents have a term of 14 years from the date of issue. Like utility patents, applications for design patents must be filed before the design is disclosed to the public, especially if the applicant intends to apply for international rights.

Design patents are enforced more like trademarks. The test for design-patent infringement centers on whether an ordinary observer, familiar with the prior art, would be deceived into believing the design protected by the patent is substantially the same as the design of the product accused of infringement. Damages for infringement can be substantial, depending on the articles involved.

According to statute, design patent owners may receive damages equal to the total profits of the infringing product. Practically speaking, however, the vast majority of infringement situations are resolved without litigation. Often, the mere existence of design patents encourages competitors to think twice before copying or closely mimicking patented designs.

While utility patents filed on the functional aspects of an invention are the most common patent application, design patents are gaining in popularity as companies recognize the importance of protecting the significant time and effort that goes into designing the look of their products.

For example, iRobot has invested significant resources developing the Roomba’s unique form. Ultimately, companies should not overlook the value of any investment in an aesthetic design when deciding how to protect a new product.

iRobot protected its investments in developing its product by seeking design-patent protection for its patentable designs. As a result, competitors are discouraged from imitating the Roomba’s form, and consumers today are more likely to recognize and differentiate an iRobot Roomba from competing products (see drawings from U.S. design patents below).

U.S. Design Patent No. D670877 assigned to iRobot Corporation on the ornamental design for a robot vacuum cleaner.

U.S. Design Patent No. D548411 assigned to Bsh Bosch Und Siemens Hausgeraete Gmbh on the ornamental design for a robot vacuum cleaner.

Design-patent protection may apply to parts and accessories of a product and the overall appearance of the whole product; it is not just for consumer products. Although not as visible to lay consumers as compared to vacuum-cleaner robots, industrial robots may also possess unique ornamental features that increase their appeal and distinguish them from other similar robots on the market.

In fact, the potential value of design patent protection is evident from a recent case involving Apple and Samsung. In April 2011, Apple sued for patent infringement alleging that many of Samsung’s most popular smartphones and tablets infringed several of Apple’s patents, including four design patents.

Two of the asserted design patents related to the ornamental appearance of a front face for smartphones, one to the overall appearance of a tablet, and one to the graphical user interface that appears when the smartphone is turned on.

On Aug. 24, 2012, a jury found that all four of Apple’s design patents were valid, and that 18 of the accused Samsung products infringed at least one of Apple’s design patents. In total, the jury initially awarded Apple $1.05 billion in damages for what Apple called “slavish copying” of its world-famous product designs.

U.S. Design Patent No. D650820 assigned to Hon Hai Precision Industry Co., Ltd. on the ornamental design for a robot.

Simply put, looks matter. When evaluating IP needs, companies sometimes underestimate the value of design patents. While not a substitute for utility patents or trademarks, design patents can serve as useful tools for protecting against counterfeit and competing products with similar appearances. Obtaining a design patent can be inexpensive compared with a utility patent, and often design rights can be enforced without costly litigation. As a result, robotics companies entering the consumer market should strongly consider design-patent protection as part of their IP strategy.

Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner LLP, or the firm’s clients.

See Also: Design-Patent Protection: What to Do When the Face of Your Robot Becomes the “Face” of Your Company PDF Download
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About the Authors

Elizabeth D. Ferrill focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant review, and litigation. She also has extensive experience in with design patents involving consumer products, vehicles, and graphical user interfaces.

Linda J. Thayer focuses her practice on high-tech patent litigation and administrative trial procedures to request review of the patentability of issued patents outside of litigation, such as, post-grant review, inter partes review, and the transitional program for review of covered business method (CBM) patents.

Robert D. Wells focuses his practice on patent litigation, patent prosecution, and client counseling involving various intellectual property issues. He works with a wide variety of technologies, including robotics, laser diodes, LEDs, optometric devices, smartphones, and other computing technologies.

All are members of Finnegan’s Robotics Group.