March 5, 2020

It’s a story that has become all too common these days. After investing time and resources into developing a new product, one that has a look and feel that is attractive to consumers, the investment pays off, and the product achieves commercial success. At that point, the first copy appears in the market. Maybe a cease and desist letter successfully eliminates that copy, but soon after, there’s another. And another. 

The market becomes flooded with cheap, often foreign-made imitations attempting to capitalize on the appeal and success of the authentic product. Trying to eliminate the knockoffs becomes a losing game of Whac-A-Mole: for each copy eliminated, more pop up in its place. Moreover, because the knockoffs are often constructed with cheaper materials and processes, the copycat can sell them at a much lower price, increasing their likelihood of diverting customers seeking the novelty of the authentic product. 
Design patents are increasingly powerful tools in combating the emergence of such copies. Design patents protect the new and non-obvious ornamental features of a product. Ornamental features may include the configuration or shape of an article, such as three-dimensional shapes and contours. Other features include the surface ornamentation applied to the article, such as transparency or reflectivity, and other visual aspects. A design patent is infringed when one makes, uses, sells, offers to sell, or imports a product where the overall visual impression is substantially similar to the drawings of the design patent in the eyes of an ordinary observer. Thus, an infringement analysis generally includes a comparison of the drawings of the design patent with the product in view of the description. 

With the emphasis of infringement being generally on a comparison of the patent drawings to a product by the ordinary observer, alternative enforcement mechanisms to cease and desist letters and litigation are practical, and a strategic approach to enforcement utilizing these various mechanisms tips the Whac-A-Mole game in favor of the patent owner selling the authentic product.

For example, e-commerce platforms, such as Amazon, will review design patent infringement claims and remove listings for products that fall within the scope of the patent. The work, time, and cost involving in connection with a take-down request to submit a design patent infringement claim to an e-commerce platform is significantly reduced relative to cease and desist letters and litigation. Dozens of infringing products may be addressed in the same time it would have traditionally taken to only address one. Especially for authentic products where the online market on these platforms constitutes a large portion of sales, removal of infringing listing using these means creates a measurable dent in eliminating the copycat landscape.

Design patents may soon provide another considerable boost to sellers of authentic products in the fight to combat copies. The Counterfeit Goods Seizure Act of 2019 is a bipartisan bill recently proposed in the U.S. Senate that adds design patent infringement as justification for U.S. Customs and Border Patrol (“CBP”) to seize goods at the border. If enforced, a design patent owner may record the design patent with CBP. They will then analyze products being imported to determine whether the products fall within the scope of the design patent. If the products violate the design patent, the products would be forfeited, with the importer potentially being subject to fines. Thus, with a CPB recording, a design patent owner would be able to effectively combat any copies entering the U.S. from abroad.

With design patent rights underlying the enforcement mechanisms that continue to emerge as tools in combating copycats, the value and importance of design patents have never been higher. With respect to the increasing emphasis placed on the appearance and user experience of products being a competitive advantage in the market, design patents dramatically exceed the relatively low expense of obtaining them. Given the trends of the last few years and the changes in motion, the value of and need for design patent protection will only become more critical. With the introduction of any new product, companies should be seriously considering design patents as part of a strategic, comprehensive intellectual property portfolio.