September 18, 2020

Volume X, Number 262

September 17, 2020

Subscribe to Latest Legal News and Analysis

September 16, 2020

Subscribe to Latest Legal News and Analysis

September 15, 2020

Subscribe to Latest Legal News and Analysis

Protecting Your Products Using Design Patents in the Era of Copycats

Your product development team spent years designing a product, working out every design detail until it is just right. Your company spent significant time and money marketing the product, shoring up a great reputation for the product and the company that stands behind it. Then, a copycat comes along with a knockoff and starts selling a product that looks eerily similar—or even identical—to yours. When your customers search online for your long-developed and lauded product, the knockoff appears, and at a fraction of the price. You are certainly surprised, and likely dismayed.

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

When most people think about IP, they think about copyright, trademarks, and utility patents. While these types of IP can provide a certain level of protection for product design, each one has a significant drawback to design protection. Copyright and trademarks (specifically trade dress) can be difficult to obtain to protect a design of a product. Utility patents can provide broad protection for the structural (and some functional) features of the product, but obtaining a utility patent can be a lengthy and difficult process (sometimes taking more than 3 years) and can be very expensive.

Often overlooked, however, is another vehicle for protecting the design of a product (or a portion thereof): 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 works, and its structure, a design patent protects the way an article looks, including its shape, configuration, and/or surface ornamentation.

A design patent can be obtained for “any new, original, and ornamental design for an article of manufacture.” “In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself.”

Importantly, a design patent can protect a portion of a product. In contrast to utility patents, design patents can be obtained quickly (often in under 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 portions, features, and/or modifications in the design of a single product.

Remedies Available to Design Patent Holders

Once design patent protection is secured, many options become available to address copycats. For example, for products sold on Amazon.com, Amazon has enabled IP rights owners to report infringement directly on the platform. Amazon then reviews the infringement allegation, and determine whether to remove the copycat’s product. Other search engines and marketplaces have similar processes that an IP rights owner can utilize. While the copycat may repeatedly try to relist its fake item under a different name or description, or using a different search engine or marketplace, so can the IP rights holder repeatedly take action to enforce. Ownership of a design patent allows the rights holder to continue to address copycats inexpensively by requesting the listing company remove the infringing item from the search   engine or marketplace.

Additionally, if it meets certain requirements, a design patent holder can initiate a US International Trade Commission (ITC) investigation, in which the remedy is an exclusion order preventing importation into and sale in the United States of infringing products. ITC investigations have the benefit of concluding rather quickly, usually in approximately 16 months. And an exclusion order is a powerful remedy, effective even against copycats who are named in an investigation and then default (and sometimes even against copycats who are not named in an investigation at all), enforced by US Customs and Border Patrol (CBP) by seizing infringing 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 patents. 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 damages, which are available by suing the copycat in US district court. But district court litigation can be time-consuming and costly. Additionally, in many cases, the infringers do not even bother to appear, and they simply disappear. Thus, monetary damages can be difficult to obtain from copycats, especially those who operate outside the US.

When Should You File a Design Patent?

Design patents should be filed when the product is finalized that includes unique aesthetic visual features, and before any disclosure of such product to the public.

Where Should You File a Design Patent?

The obvious answer is you should obtain design (patent) protection wherever you sell your product, or where you intend to sell your product.

However, often overlooked are countries with large manufacturing sectors, where knockoffs are typically produced. It is extremely important to file for protection in such countries, even if your company does not intend to sell there. Design patents (sometimes called “registered designs” outside the US) can be used in countries of manufacture to stop copycats at the source, before they introduce a knockoff product to the market. For example, 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.

Ultimately, it may turn out to be a cat and mouse game between you and the infringers. As you shut one down, another may open in a new location, or under a different name. However, with the requisite tools available to you, including design patent protection, you have a much better shot at stopping copycats from benefitting from the product your company took years to develop and market or, worse, ruining the reputation of your product or your business when a consumer receives a product it thought was yours but is not.

Copyright © 2020, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume X, Number 259

TRENDING LEGAL ANALYSIS


About this Author

Gary A. Abelev Litigation Attorney Hunton Andrews Kurth New York, NY
Partner

Gary represents a large number of domestic and foreign clients in a variety of areas, including patent litigation, contentious and non-contentious proceedings before the governmental agencies (International Trade Commission, United States Patent and Trademark Office, and others), due-diligence studies, patent portfolio management and procurement, negotiations/disputes and licensing matters.

The majority of his practice focuses on medical imaging, analysis and therapy technologies, computer software and hardware, imaging technologies, semiconductor manufacturing, wired and wireless...

212-850-2881
Gregory Miller, Andrews Kurth, IP, Intellectual Property, patent
Associate

Gregory is an Associate in the Intellectual Property section of Andrews Kurth. He concentrates his practice on the preparation and prosecution of patents, patent appeals, patent opinions, patent litigation, intellectual property licensing and acquisitions, transactions, agreements and due diligence. He works with companies in all stages of growth, and has extensive experience in a variety of matters, from the development of initial patent strategies for start-ups, to the maintenance of cost-effective quality in the management of high volume filings for Fortune 500 companies. Gregory also has extensive experience working directly with universities in obtaining patent protection and developing IP strategies.

+1.212.850.2892