Recent court activity confirms the value of design patents covering a wide range of products from footwear to auto repair and aftermarket parts. This is perhaps the best value for money when it comes to intellectual property protection.
When you hear about a patent, most people think of how an invention works, which is covered by a utility patent. In comparison, a design patent protects the appearance of an invention or the ornamental design of the product. The design patent does not cover the mechanical structure or operation of an invention, but rather protects the novel and non-functional appearance of the product. The scope of protection of a design patent is defined by the numbers of the application, represented by views of the appearance of the product in pen and ink drawings. However, keep in mind that you must file for patent protection within one year of public disclosure or the first sale of the product. Otherwise, you lose all rights to do so.
Design patents are much easier (and faster) to obtain than utility patents and cost much less. They also do not require maintenance costs. What makes them even more beneficial is that the damages awarded for design patent infringement are the infringer’s profits throughout the supply chain, including the manufacturer, wholesaler and retailers. Compare that with the damages awarded for a utility patent at a reasonable royalty (about 5-7% of gross sales) from the retailer alone.
As a result, design patents have proven to be a valuable tool in preventing or stopping competitors or counterfeits, and many companies use design patents to protect their products. However, few small and medium-sized businesses take advantage of design patent protection. This is especially evident when you consider that large companies, such as shoe and auto manufacturers, file design patents on almost everything they sell.
One area where design patents have become increasingly valuable is fashion. Recently, Rothy’s Inc., a popular shoemaker, settled a patent and trade dress infringement lawsuit with its competitor, OESH, in US District Court for the Western District of Virginia. Rothy’s Inc. applied its design patents, including US Design Patent No. D768,366, covering its “The Flat” ballet shoe and forced OESH to redesign its shoe as part of the settlement.
Figure 1 of U.S. Design Patent D768,366
In a statement, Rothy’s said, “OESH has agreed that Rothy’s trade dress in ‘The Flat’ shoe and his design patents are valid and will redesign his accused shoe product.” By filing for design patent protection, Rothy’s Inc. was able to prevent a competitor from taking off their shoes and keeping the product fully owned by the company.
Auto parts are another product line that enjoys design patent protection. Recently, the Federal Circuit confirmed the value of design patents covering automotive aftermarket parts in Body Parts Ass’n v. Ford Global Techns., LLC. The case concerned two design patents covering the hood and headlights of the Ford F-150 vehicle:
Figure 2 of U.S. Patent D501,685
Figure 1 of U.S. Design Patent D489,299
The applicant argued that Ford’s design patents were functional, not ornamental, aspects of the product and therefore were not valid. The court rejected the argument and ruled that “the aesthetic appeal of a design to consumers is insufficient to make that design functional”, thus reinforcing the value of a design patent to protect an automotive component. which in itself may not be entitled to utility patent protection.
Design patents can also be a valuable tool in controlling counterfeit / copy online sales. Websites, such as Amazon.com, have platforms that allow companies to upload a design patent to remove counterfeit and / or counterfeit listings. You can check out the Amazon Seller Central forums and see how design patents are an effective tool for removing counterfeit ads on Amazon.
The main points to remember are:
- Courts enforce design patents;
- The scope of design patents continues to expand;
- File for patent protection as soon as possible, but certainly within a year of public disclosure or your first sale;
- Design patents are used as a tool to prevent competitors from bringing down your products; Design patents are used to protect components of a product that may not be eligible for utility patent protection;
- Design patents are a cost effective way to protect your company’s investment and innovation in a new product; and
- Design patents can protect the new ornamental design of many products, including shoes, handbags, brushes, toys, auto parts, lighting fixtures, mugs, mugs, tools, etc.
For these reasons, a design patent can play an important and effective role in a company’s intellectual property portfolio strategy. Speak to an experienced patent attorney to learn more about this valuable tool for your business.