Using Design Patents in the Age of Copiers


Your product development team has spent years designing a product, working every design detail until it’s perfect. Your business has spent a lot of time and money marketing the product, building the reputation of the product and the company that supports it. Then an imitator comes up with a counterfeit and starts selling a product that looks eerily, if not identical, to yours. When your customers search online for your long-developed and leased product, counterfeiting appears – and at a fraction of the cost. You are certainly surprised and probably dismayed.

What can be done to remedy this very unfortunate situation? One possibility is to contact the online search engine or a third-party retailer, who may have protocols to address these issues. However, without intellectual property (IP) protection for your product, very few remedies are available.

When most people think of intellectual property, they think of copyright, trademarks and utility patents. While these types of intellectual property can provide some level of protection for product design, each has a significant downside to design protection. Copyright and trademarks (especially trade dress) can be difficult to obtain to protect the design of a product. Utility patents can provide broad protection for the structural features (and some functionality) of the product, but obtaining a utility patent can be a long and difficult process (sometimes taking more than 3 years) and can be very expensive.

However, another means of protecting the design of a product (or part of it) is often overlooked: the design patent. A design patent protects the aesthetic features of your product. While a utility patent protects the way an article is used and functions, as well as its structure, a design patent protects the appearance of an article, including its shape, configuration and / or ornamentation. of its surface.

A design patent can be obtained for “any new, original and ornamental design for a manufactured article”. “In a design patent application, the object claimed is the design incorporated or applied to a manufactured article (or part thereof) and not the article itself.

It is important to note that a design patent can protect a portion of a product. Unlike utility patents, design patents can be obtained quickly (often in less than a year) and relatively inexpensively (typically a quarter of the cost of a utility patent). Multiple design patents can be obtained for a single product, providing protection for various parts, features and / or design changes of the same product.

Remedies available to design patent holders

Once design patent protection is secured, many options become available to combat imitators. For example, for products sold on, Amazon allowed intellectual property rights holders to report infringements directly on the platform. Amazon then examines the violation allegation and determines whether to remove the product from the copier. Other search engines and marketplaces have similar processes that an IP owner can use. While the copier may repeatedly attempt to relist their counterfeit item for sale under a different name or description, or by using a different search engine or marketplace, the owner of the intellectual property rights may also take steps to do so. respect. Ownership of a design patent allows the rights holder to continue to fight imitators at a lower cost by asking the SEO company to remove the infringing item from the search engine or the marketplace.

In addition, if he meets certain requirements, the holder of a design patent can initiate an investigation by the United States International Trade Commission (ITC), in which the appeal is an exclusion order preventing the importation and sale in the United States of counterfeit products. ITC investigations have the advantage of being concluded fairly quickly, usually in about 16 months. And an exclusion order is a powerful remedy, effective even against imitators who are named in an investigation and then by default (and sometimes even against imitators who are not named at all in an investigation), enforced by US Customs and Border Patrol (CBP) by seizing counterfeit goods at the US border.

(CBP also has an Intellectual Property Rights (IPR) Enforcement Program through which the agency is able to seize counterfeit products covered by trademarks and copyrights registered with CBP, but not Legislation was introduced in 2019 that would expand CBP’s IPR enforcement program to include design patents, as previously discussed on this blog here.)

Another remedy available to design patent holders is compensation, which is available by suing the copier in a US district court. But litigation in district courts can be long and costly. Plus, in many cases, counterfeiters don’t even bother to appear and simply disappear. Thus, monetary damages can be difficult to obtain from imitators, especially those operating outside of the United States.

When should you file for a design patent?

Design patents must be filed when the product is finalized which includes unique aesthetic visual features, and before any disclosure of this product to the public.

Where should you file a design patent?

The obvious answer is that you need to get design protection (patent) wherever you sell your product, or wherever you intend to sell your product.

However, countries with large manufacturing sectors, where counterfeits are typically produced, are often overlooked. It is extremely important to file for protection in these countries, even if your business does not intend to sell there. Design patents (sometimes referred to as “registered designs” outside of the United States) can be used in countries of manufacture to stop copiers at the source, before they bring a counterfeit product to market. For example, the People’s Republic of China has three enforcement mechanisms for design patents: (i) administrative enforcement, (ii) litigation enforcement, and (iii) customs protection. Other countries may have similar mechanisms.

In the end, it can turn out to be a cat-and-mouse game between you and the offenders. When you close one, another may open in a new location or under a different name. However, with the necessary tools at your disposal, including design patent protection, you have a much better chance of preventing imitators from taking advantage of the product your business has taken years to develop and market or, worse, to ruin the reputation of your product or business. when a consumer receives a product they thought was yours but isn’t.

Copyright © 2021, Hunton Andrews Kurth LLP. All rights reserved.Revue nationale de droit, volume X, number 259

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