Filing design patents can protect a medical robot’s overall aesthetic and the software user interface.
Roman Fayerberg, Todd C. Basile and David J. Dykeman, Greenberg TraurigMedical robotics companies often emphasize utility patents when building strategic patent portfolios, given the complex nature of robotics technology. However, don’t overlook design patents, which provide another layer of protection by covering elements of robotics beyond the scope of utility patents.
A robust patent portfolio is an important indicator of a successful medical robotics company. As the medical robotics industry continues to grow and more and more companies enter the increasingly competitive market, a medical robotics company needs a comprehensive and strategic patent portfolio around its technology to compete. A strategic patent portfolio attracts investors, keeps competitors at bay, and provides necessary ammunition in litigation.
Utility patents vs. design patents
Both utility and design patents have the same patentability requirements (novelty, non-obviousness, and utility). Both grant the owner the right to exclude others from making, using, selling, offering for sale or importing the claimed invention in the U.S. However, this is where the similarities end and the differences begin.
Utility patents protect the operational or functional features of a product or how the product works. In contrast, design patents protect the ornamental or nonfunctional features of a product or how the product looks.
Utility patents include a complex and lengthy specification with a thorough written description of the invention and its use and detailed drawings of various embodiments of the product. Most importantly, utility patents include multiple claims of varying scope defining the invention, which may provide patent coverage for various embodiments of the invention and may be different (broader or narrower) than the exact product shown in the drawings. In contrast, design patents have no written description and are limited to one claim covering only the exact product shown in the design patent drawings However, continuation design applications are available and can have a different scope than the parent design patent by either adding or disclaiming portions of the original drawings.
Duration of protection
The term of utility patents (20 years) and design patents (15 years) is also different. Utility patents generally last 20 years from the effective filing date (or the priority date) of a patent application. The term of utility patents is sometimes extended for more than 20 years due to delays by the USPTO, but typically the term of continuation and divisional utility patents will expire (or be disclaimed) at the same time as the parent utility patent or 20 years from the filing date of the parent application. For design patents, the term is 15 years from the patent issuance date. How the term is calculated is an important difference and can be used strategically. Because the term of the design patent is counted from the issuance date rather than from the priority date as for utility patents, continuation or divisional design patents filed after the parent application can stay in force for years after the parent design patent expires. They can stay in effect longer than 20 years from the parent application’s filing date. A design patent family can thus outlast a utility patent family with the same priority date.
Timing of public disclosure
Another important difference is that design patent applications do not become public unless and until they issue as patents. Generally, all utility patent applications are published 18 months from the earliest priority date. The USPTO allows applicants to request non-publication, but only if the applicant foregoes foreign protection. In contrast, design patent applications remain confidential even if there is a foreign counterpart. As a result, competitors will not be able to obtain information about the company’s technology under development before the technology is commercialized or a patent issues.
Design patents for medical robots
Factors like aesthetics and approachability often play into consumer purchasing decisions, especially when it comes to robotics. Many expect cutting-edge medical robots to look “cool,” “smooth,” and “user-friendly.” As such, the overall look and feel of a surgical robot, and associated tools and its software user interface, can influence buyer perceptions and the user experience. With this comes value worth protecting. Accordingly, many smart medical robotics companies consider supplementing their utility patents with design patents to provide additional protection covering the appearance or ornamental features of their product platforms.
Robot design features
It’s possible to use design patents to protect the overall design of the robotic system and tools that the users may find appealing. For example, aggressive lines can give robots a high-tech feel that complements new and innovative procedures. Smoother, more sweeping lines can convey approachability desired by patients undergoing more routine, inpatient procedures. Some lines are better than others for invoking emotions and responses in purchasers and users of surgical robots. Thus, competitors may be inclined to copy or impersonate successful designs to increase sales. Design patents can deter copying or knock-offs and help an innovator maintain its edge over less creative competitors.
Companies often include certain ornamental elements to signal to the user that they originate from the same company and are specifically designed for use together. Think how consumer shaving razors often include handles and heads with lines that complement an overall design theme where they are joined. It’s possible to design detachable components of a surgical robot with similar interfaces that convey to a user that this particular component goes with this particular robot without even having to read the label. Design patents can be a particularly effective way of protecting such “trade dress” without the challenges of proving that the particular design theme is so distinct that it has taken on “secondary meaning” in the eyes of consumers, which is typically required to win traditional trade dress lawsuits.
Software user interfaces
Design patents can also be used to protect graphical user interfaces (GUI), which are important for robots. A well-designed GUI provides many benefits to users. For example, the use of the robotic system can be simplified if the GUI provides intuitive controls or easy-to-understand feedback, not unlike innovative icon-based interfaces first employed with smartphones. Design patents can be used to protect these features of the GUI. The overall screen design and individual icons can be protected by design patents. Moreover, animated icons that go through a series of transformations can also be protected. A strategic design patent portfolio protects GUI elements desired by users, thus providing another competitive advantage to design patents.
Enforcing design patents
For all their merits, the scope of protection offered by design patents is generally more limited than that of utility patents. Simply stated, utility patents can cover a variety of aesthetic embodiments so long as each includes the claimed functionality, while design patents generally require that the accused design have a very similar “look and feel” as the drawings in the design patent. More specifically, courts will find design patent infringement if the accused design is so similar to the design patent drawings that a purchaser would be deceived by the similarity between the claimed and accused designs. The similarity, the reasoning goes, would induce the purchaser to buy one, supposing it to be the other product.
In other words, the accused design is compared to the drawings of the design patent rather than more mechanically oriented claims of a utility patent. Competitors may thus be able to “design around” a design patent by making small changes to the patented design to avoid infringement, especially in a crowded field with similar prior art. Consequently, the appearance and selection of the drawings is critical in design patents.
Enforcing design patents offers some unique benefits. If infringement is found, an owner of a design patent has two options when seeking damages. The first option is to seek damages under the standard patent damages statute available for both design and utility patents, which is a reasonable royalty. The second option, which is typically not available for the infringement of utility patents, is to recover the infringer’s total profits. In other words, it may be possible for the design patent owner to collect total profits on the entire product, even when the patented design constitutes only a portion of the product. Moreover, as discussed above, continuation practice is useful to obtain design patents of varying scope of protection. Accordingly, even though design patents provide a somewhat limited coverage, design patents can still serve as a strong deterrent to infringement.
When building a strategic patent portfolio, medical robotics companies should consider filing for design patents. Design patents are typically easier and less expensive to obtain than utility patents. Although generally having a more limited scope of protection, design patents can still deter potential infringers in the U.S. and foreign countries. Due to the differences between the two patent types, design patents can supplement protection provided by utility patents, creating comprehensive patent coverage.
This article reflects the opinions of the authors, and not of Greenberg Traurig or Medical Design & Outsourcing. The article is presented for informational purposes only and it is not intended to be construed or used as general legal advice nor as a solicitation of any type.
Roman Fayerberg is a registered patent attorney with over 15 years of experience in patent and intellectual property law at Greenberg Traurig in Boston. He advises clients on procurement and enforcement of IP rights, including domestic and international patents, with the focus on medtech and life science technologies. Fayerberg’s patent practice builds on seven years of experience gained as a research and development engineer at C.R. Bard (now Beckton Dickinson) and Boston Scientific. He can be reached at email@example.com or (617) 310-5206.
Todd C. Basile is a registered patent attorney at Greenberg Traurig in Dallas with more than 15 years of combined experience in the tech and legal industries. He helps technology companies protect and commercialize their innovations and brands across various industries including medtech, robotics, and software. Basile also represents technology investors in M&A deals, negotiates technology transactions, and assists clients in navigating IP disputes. He can be reached at firstname.lastname@example.org or (214) 665-3640.
David J. Dykeman is a registered patent attorney with 25 years of experience in patent and intellectual property law, and co-chair of Greenberg Traurig’s global Life Sciences & Medical Technology Group. Dykeman’s practice focuses on securing worldwide intellectual property protection and related business strategy for high-tech clients, with particular experience in medical devices, robotics, wearables, life sciences and information technology. He can be reached at email@example.com or at (617) 310-6009.