2021 Year in Review on Design Patents: Analysis and Trends: United States International Trade Commission: Design Patents Outrank Obtaining GEO | Sterne, Kessler, Goldstein & Fox LLC

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In May 2020, we reported in an article published by Law360, “design patents trump utility patents in injunctive relief”. The same is true when it comes to a rare form of injunction – a General Exclusion Order (GEO) – issued in Section 337 investigations by the International Trade Commission. (ITC) of the United States.

The ITC can issue an injunction in the form of a cease and desist order (CDO), a limited exclusion order (LEO) or a general exclusion order (GEO).

  • A CDO prevents a defendant named in an investigation, for example, from continuing to sell infringing products already in the United States.
  • A LEO prohibits respondents named in an investigation from importing counterfeit products into the United States.
  • A GEO prohibits the importation of all counterfeit products into the United States from any source, including those that have not been investigated by the ITC.

Due to its broad scope, a GEO is the least commonly issued of the three, available only when “necessary to prevent circumvention of an exclusion order limited to named person products” or “there is a pattern of violation … and it is difficult to identify the source of counterfeit products. 19 U.S.C. 1337(d). And because ITC investigations aim to be completed within 16 months of initiation, a GEO can be a quick and powerful tool to stop and deter the importation of infringing goods into the United States.

Take for example a recently completed survey, Ccertain vacuum insulated flasks and their components (Inv. no. 337-TA-1216). This investigation resulted in a final determination issuing a GEO regarding three flask cap design patents (US Design Patent Nos. D806,468; D786,012; and D799,320) owned by Hydro Flask Steel Technology, LLC d/ b/a Hydro Flask and Helen of Troy Limited, approximately 17 months after the initiation of the investigation. Another recent survey, Certain electric shavers and their components and accessories (Inv. No. 337-TA-4230), appears to be moving in the same direction, receiving an initial decision granting a GEO regarding a utility patent and a design patent (US Patent Nos. 8,726,528 and D672,504) for the electricity, just over a year after the institution of the investigation.

Design patentees considering filing a Section 337 investigation should keep in mind that such investigations, unlike patent litigation in a district court, have an “industry national”. One aspect of this requirement is that each element of at least one claimed patent claim exists in an actual product.

Since design patents can only include one claim, it may be more difficult for design patents to meet this requirement. However, in cases where the patent holder has protected their commercial embodiment with a design patent, the domestic industry side is more likely to be satisfied.

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