Indispensable Strategies for Protecting Disposable Products
As commerce moves more and more online, companies are facing unique challenges with respect to protecting their products, and the low cost of entry for online sellers has contributed to proliferations of knock-off and potentially counterfeit products being sold. This is particularly true when the product being sold is a simple disposable or replaceable product, such as a refill cartridge, a duster refill, or a coffee pod.
Online marketplaces generally have takedown procedures that can be leveraged by patent owners to remove potentially infringing products from the marketplace. However, manufacturers of knock-off products are becoming increasingly savvy when it comes to intellectual property, and in many cases have designed the product to circumvent existing patent protection.
When developing a patent strategy, companies with products that include disposable components need to specifically consider how they are protecting those disposable components with intellectual property, particularly when the component is simple and easily manufactured. A well-developed patent filing strategy will allow an IP owner to quickly and cost-effectively protect disposable components, even in view of the movable target of available knockoff products, with recommendations for developing such a strategy provided below.
Before a public disclosure or offer for sale, the first step is to consider seeking design patent protection for the appearance of a disposable product. In some cases, it can be difficult and costly to obtain utility patent protection for a disposable or refill product, in part because of the simplicity of the product. Design protection, however, provides a simpler and more cost-effective route to obtain patent protection for a disposable refill.
Further, when a design patent application has been filed in connection with disposable products, it can be highly beneficial to keep the patent family alive by filing continuations and/or divisionals for as long as the disposable product is on the market, during which time various additional design patents issue that emanate from the original application filing. The filing of continuing applications not only strengthens protections for the marketed disposable product, but also provides a patent owner with the flexibility to target any newly-identified knock-off products that enter the marketplace. If the patent family remains active, i.e., one or more continuation or divisional applications remaining pending with the USPTO, the patent owner can often craft design claims that read on the knockoff product, and can thus respond to knockoffs, even when a manufacturer or seller of the knockoffs has designed the product to circumvent existing IP protections.
In light of the above, when drafting design claims to target knockoff products, design patent owners should consider the use of Expedited Examination for Design Applications, also known as the “Rocket Docket.” Filing a design application as a “Rocket Docket” application can shorten the examination of design applications from one or more years to a matter of months. In some instances from our recent experience, the period from filing the application to grant can be less than four months. Once a design patent is obtained, that patent can be used to initiate online takedown procedures on the various online marketplaces. In some cases, then, a time from which an IP owner identifies a knockoff product to the time when takedown procedures are initiated can be shortened by months or even years with the use of the “Rocket Docket.”
We note that the filing of a “Rocket Docket” design application incurs a cost: the request must be accompanied by a $1,600 filing fee and shifts a burden to the Applicant to perform a pre-examination search to identify art potentially relevant to the product to be protected. However, in many cases, the potential for increased sales due to the quicker removal of knockoffs and infringing products will outweigh the costs associated with expedited prosecution of the design application.
The Quarles design rights legal team is nationally recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page. To subscribe to our mailing list and receive updates that highlight issues currently affect the design rights legal field, click here.