Design Patent Enforcement?
Design Patents are different from Utility Patents. Classic examples of design patents are tableware, tire treads, shoe treads, jewelry, furniture, and product packaging. Some famous design patents include the original curvy Coca-Cola bottle and the Statue of Liberty.
What is a Design Patent?
Design patents protect the ornamental features of a useful invention. Around the world, Design Patents are known as industrial design patents. When compared to a Utility Patent, Design Patents have limited protection. They do not protect the technical or functionality features of the invention or the use of the invention, they protect the way it looks. The duration of a Design Patent is limited to 15 years where a Utility Patent generally lasts 20 years.
How can Design Patents be enforced?
Enforcement of a design patent is also limited. Generally, inventors of a Design Patent can stop others from making, using or selling a product which looks like the patented product. It doesn’t matter if it does the identical thing, the identical way and achieves the same result. It must look like the patented product. In some cases, a small differences between the patented invention and an infringing product can be enough to get around the patent.
Section 337 Investigations
The owners of a Design Patent have the right to stop others from making, using, selling or importing into the US any products which incorporates the patented design. To enforce your rights, typically you would have to go to Court and seek an injunction or go to the International Trade Commission (ITC) and seek a Section 337 investigation and if successful obtain an exclusion order limiting the shipment and sell into the US of an infringing product. Although these ITC “section 337 investigations” can be effective, they can require extensive work and are often expensive for patent owners.
Strategically, design patent actions before the ITC are streamlined compared to infringment actions filed in federal courts. Before the ITC, for example, a party simply needs to file one complaint to proceed against multiple foreign and domestic accused infringers (respondents). In contrast, in federal courts, patent owners commonly have to file multiple complaints against domestic defendants in one or more judicial districts (that may never be consolidated) to comply with venue laws. 28 U.S.C. §1400(b); TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017). Additionally, it is not uncommon for a federal courts to not have the ability to exercise personal jurisdiction over foreign infringers. But even when they do, patent owners have no guarantee that international jurisdictions would recognize a United States courts’ judgments or that patent owners could meet the high standard for enjoining foreign infringers from importing or otherwise distributing infringing products in the United States. See, e.g., eBay Inc. v. MercExchange L.L.C., 547 U.S. 388 (2006).
The ITC is required by statute to resolve actions within 16 months. 19 C.F.R. § 210.52. Federal courts, by contrast, often order stays, continuations, and extensions that seem to prolong disputes indefinitely or at least years. In fact, the ITC’s five-day evidentiary hearings are much shorter compared to the weeks-long (and sometimes months-long) trials in federal courts, with an enormous costs to the court litigants.
The cost to bring an ITC is less than a federal court complaint. The average cost to bring an ITC enforcement action through post appeal procedures can vary between $1.5 Million and $4 Million. This is still less expensive than a comparable patent infringement case, which can range between $2 Million and $6 Million and take several years (or more) to conclude.
What can inventors do to stop Design Patent infringement?
Back in 2019, the Senate introduced a bill—the Counterfeit Goods Seizure Act of 2019—to allow for an expedited enforcement process to stop the infringement of products protected with a Design Patent. Unfortunately, that bill never became law, but under the proposed legislation, the US Customs and Border Department (CBP) would have be allowed to seize counterfeit goods that infringe intellectual property rights, specifically design patents, at the border. If this bill passes, Design Patent holders can finally have a meaningful option to stop the counterfeits (which are estimated at over $1 Trillion) from coming into the US.
Currently, trademark holders and copyright holders can use the CBP to stop counterfeiting products covered by trademarks and copyrights. But Design Patents holders are not able to use the stream-lined CBP procedure to enforce their rights. The proposed legislation will allow design patents to be added to the list of intellectual property that CBP can enforce. That bill would have allowed Design Patent Holders to enforce their patent rights at the border to limit the flow of counterfeit goods into the US.
If you would like to discuss enforcement of your Design Patent please contact one of our patent attorneys.