“Because design patent infringement requires focusing on the set of designs to assess whether an ordinary observer would believe that the accused infringing product is a copy, it is much easier to demonstrate infringement, which strengthens the right. of the design patent. “
Simply put, the rights provided by a design patent will be extremely unsatisfactory. However, design patents should be taken into consideration as a design patent can in many cases be granted in as little as six to nine months. While obtaining some protection is important to an overall marketing strategy, getting at least some protection quickly can be advantageous over the wait of the two to three years it will likely take to get a patent. usefulness.
Design patents can also be an extremely useful tool for a variety of reasons. For example, suppose a patent owner has dozens of design patents on a particular product – maybe 40 of those design patents that cover a particular tangible product. Very old studies of design patents suggest that, when challenged, 7 out of 10 of these design patents are ultimately liable to be declared invalid. The question is, which 70% of these 40 patents are likely to be declared invalid? If 70% are probably invalid, that still means 30% are probably valid, which corresponds to at least 12 viable design patents that remain valid. Thus, design patents, while weak, can gain significant strength in numbers. And I’ve seen a lot of design patents deter opportunists who are otherwise willing to enter a market.
Ordinary observer: it is easier to prove the violation of the design
Design patents have also become stronger than ever over the past 15 years thanks to a landmark decision by the United States Court of Appeals for the Federal Circuit in Egyptian Goddess c. Swisa. In this case, the Federal Circuit significantly changed the design patent infringement test, choosing to adopt what is known as the “ordinary observer” test. This new test is widely recognized as increasing the value of design patents because it is easier to prove infringement than before. The infringement test now asks the jury to examine the accused infringing product, then examine the design patent and determine whether the infringing product is a copy or not. Previously, the jury was supposed to focus only on the point of novelty, and not on all of the designs in the design patent.
Since design patent infringement requires focusing on the set of designs to assess whether an ordinary observer would think the accused infringing product is a copy, it is much easier to demonstrate infringement, which strengthens the right. of the design patent. Of course, design patents are always open to challenge as being invalid, and they still don’t protect functionality, mechanical structure, or operability, so having one is fine but having more than one. it’s even better. Having more than one utility patent backed is even better.
Stop counterfeits at trade shows
Another reason why a design patent is useful is that there is a possibility of obtaining a Temporary Restraining Order (TRO) to prevent infringement, which is not possible with a utility patent. The scenario is this: a design patent is issued for a consumer product. This product captures the attention of copyists who attend a trade show with a counterfeit device marketed under their own brand. If the owner has a utility patent that covers the product, an infringement determination would require a claim construction, and a TRO simply will not be available. If, however, a design patent is infringed, the district court judge should only consider the design drawings against images of the allegedly infringing device.
In fact, the United States Federal District Court in Las Vegas, Nevada processes claims for this type of TRO with some frequency, given that Las Vegas is one of the most popular locations for shows. professionals. If the judge determines that there is a probable infringement, a TRO is ordered and Federal Marshals are dispatched to confiscate the counterfeit products. This is precisely what happened with the hoverboard at the Consumer Electronics Show (CES) in Las Vegas in 2016. The owners had a utility patent – U.S. Patent No. 9,101,817 – but they also had a design patent – D746,928 (photo above). It was the design patent that was successfully used to obtain a TRO and have the counterfeit product confiscated by the Federal Marshals, effectively preventing the counterfeit from gaining orders and allowing the true owners and inventors of the hoverboard to take advantage of their justified exclusivity during this critical period. spectacle.
Thwart the secondary market
While utility and design patents provide distinct legal protection, the utility and ornamentation of an article may not be easily separable. The articles can have both functional and ornamental characteristics. For this reason, inventors and their representatives should always consider whether it is appropriate to simultaneously apply for a utility patent (to protect the function and internal mechanical structure) and a design patent (to protect the visual presentation of the product). ‘article).
In addition, it is possible that a particular product is constructed in such a way that its unique appearance makes it particularly suitable for its designated purpose. The automotive industry has used design patents for this purpose to great effect. Car accidents are an unfortunate and common occurrence. While automakers can prevent aftermarket suppliers from entering the repair market, they are able to supply original equipment at significantly higher prices than would otherwise be obtained if secondary suppliers were allowed. to access the market. Design is a way for original equipment manufacturers (OEMs) to prevent the entry of secondary players into the market. Automakers will get design patents on taillights (see Tesla’s design patent # D791,377 on a taillight below), headlights, hoods, doors, seats, fenders, wheels and pretty much anything that could be replaced. Many car manufacturers obtain design patents on the overall appearance of new vehicles. This highly efficient use of design patents prevents entry into the aftermarket until the design term expires. .
Design patents are filed by automakers such as Tesla, Inc., Ford, General Motors and many others; by clothing manufacturers like Nike and Adidas; by multinational technology companies like Apple, Samsung Electronics, Google and LG Electronics; and for consumer product giants like Procter + Gamble, Black & Decker and Colgate-Palmolive. However, why are they not more sought after by small businesses? A good question with no obvious answer.
Gene Quinn is a patent attorney and publisher and president and CEO of IPWatchdog, Inc. Gene founded IPWatchdog.com in 1999. Gene is also a keynote speaker in the PLI Patent Bar Review course and an advisor to the law firm Berenato & White, LLC. Gene’s specialty is in strategic patent advice, drafting patent applications and patent prosecution. He consults with attorneys facing specific procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation, and works with start-ups in the United States and the United States. the world, mainly in software and IT innovations. . Gene is admitted to practice law in New Hampshire, is a professional patent attorney, and is also admitted to practice in the United States Court of Appeals for the Federal Circuit. CLICK HERE to send a message to Gene.