Summer Associate Ben Gitzinger also contributed to this article.

Need another reason to secure and enforce design patents? Design patents offer a unique additional remedy in district court litigation: profit disgorgement. While design patent owners may still pursue the traditional remedies of injunctive relief (§ 283) and compensatory damages (§ 284) available to utility patent holders, Congress enacted a statute in 1887 that uniquely enables design patent owners to recover the total profits earned by the infringer from their prohibited conduct. See 35 U.S.C. § 289.

For utility patents, monetary damages are compensatory only, and are therefore limited to either the lost profits of the patentee or the monetary amount of a reasonable royalty. Design patents unlock the additional remedy of the infringer’s profits.

Profit disgorgement means design patents can maximize recovery against the infringer and simplify damages calculations. Additionally, in the instances that an infringer’s profits might be less than the value of a reasonable royalty for a specific sale, the jury will be instructed to award the higher amount to the patentee, meaning  § 284 and § 289 work in tandem to yield the highest damage award possible.

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