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Phillip W. Black, JDDesign patents have become a vital part of any well-rounded IP portfolio and, in certain industries, are essential to a company’s success. With recent court cases such as Apple Inc. v. Samsung Electronics Co., Ltd and RTIC vs. YETI, design patents and other trade dress components of a business' intellectual property portfolio have come to the main stage as a means of brand and product protection. Here we'll discuss several ideas for strengthening your design patent portfolio.

Broaden the Scope of Features Claimed

Design applications can be configured to protect less than the entire product. Simply, solid lines are claimed and dashed lines are disclaimed, meaning they will not be considered during the prosecution or infringement analysis. You should always consider broadening your applications by dashing out non-essential elements of your design. Instead, you can focus on the elements that are unique or novel. Patent owners are entitled to the “total profits” from an infringing article, regardless of what portion of the infringing article was claimed in solid lines. The broader you can make your design patent, the better your chances of successfully enforcing it against infringers.

Family of Application

Patent portfolios can be enhanced and strengthened by filing a series of continuation applications or sister applications to cover multiple different features of the same product, just like a utility patent. Keeping a family of design patents alive allows you to make minor changes during product development and to fend off competition once the product goes to market. As I tell all of my clients, creating a broad family of both utility and design patents is just like investing in a great insurance policy.

Building a design application portfolio from your utility application

If your utility application provides sufficient disclosure of the components you wish to protect with a design patent, you may be able to file a design patent application claiming priority to the utility patent application.

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