After a long, hard day, a loyal customer strolls into the welcoming doors of his favorite watering hole. As his eyes adjust to the dim lighting, the crowd near the bartender magically parts and, as if a gift from the gods, he sees the distinctive bottle of your craft beer — his favorite. Pointing to the bottle, he confidently places his order. He takes a sip, expecting that familiar taste — but wait, that’s not right. This is an imposter! What gives?
As readers of Craft Brewing Business know, craft beer is on the rise. Today, there are more than 3,000 breweries operating in the United States, a far cry from the 1970s and 1980s. All those breweries mean endless choices for consumers, but it also means brewers need to find ways to stand out. While most brewers turn to trademark law to protect their brand, design patents are a useful and often overlooked tool to protect innovative packaging, displays, glassware, labeling and tap handles. Design patents can help brewers keep others from copying their unique “look and feel.”
What are design patents?
Design patents are, as you would expect, a protection for a design. Design patents cannot protect the functionality of a product – that is the providence of the utility patent. If you asked someone on the street what a patent is, they would probably describe utility patents. Instead, design patents protect the “ornamental design” of a product, known in the law as an “article of manufacture.” In other words, a design patent protects the way something looks, not the way it is made or used.
To get a patent, the design must be new, not an obvious variant of an already existing design, not solely dictated by function, and clearly depicted. Companies turn to design patents for many different reasons, but primarily it is when a company has invested resources in the design of its product and wants to keep its competitors from outright copying the design or creating a “highly inspired” design. In either case, those copycat products could confuse the consumer, like the poor sap in our intro, who might think she is buying a product from one company that is actually made by another company. Trademarks serve a similar purpose, but design patents have some different aspects in how they are procured and enforced.
In the United States, design patents are granted through an examination process, where the applicant talks back and forth with the U.S. Patent and Trademark Office (PTO) about whether a design patent should be granted. To get a patent, the design must be new, not an obvious variant of an already existing design, not solely dictated by function, and clearly depicted. Once the PTO agrees that the design meets these requirements, it will issue a design patent that grants the owner 15 years during which no one can make a product with the patented design or one that is substantially the same.
Design patents are enforced more like trademarks than utility patents. A product infringes a design patent if an ordinary observer, familiar with the prior designs of the same type, would be deceived into believing the design of the product is substantially the same as the design protected by the patent. If a product is found to infringe, then a court can either order the maker of the product to stop making the product or to pay the owner of the design patent money, known as “damages”. Damages for infringement can be quite substantial. As was recently affirmed by the Federal Circuit in a recent prominent case involving Apple and Samsung, a court can award design patent owners the total profits of an infringing product. In the alternative, a court could award the design patent owner a reasonable royalty on future sales of the infringing product or the design patent owner’s lost profits (which can be helpful in instances where the infringing product has a lower profit margin).
Protect old products through new designs
Design patents are particularly useful for established industries, like the brewing industry, because of their ability to protect a new design for what might be an old product. Brewing has been around since the 6th millennium BC; there are not many more established industries in the world. While there are still innovations qualifying for utility patents every year, the majority of the brewing industry is about perfecting the craft. But, brewers can still get patent protection to protect the innovative packaging of their brews through design patents.