Can I Copy My Competitor’s Product? (Design Patent)

Basis for new product line

Companies may base their existing and future product lines on new products produced by their competitors.  However, businesses must be careful not to infringe upon rights of others when doing so.  For example, your competitor may have rights in the utilitarian features (e.g., runs faster, stays cooler, etc.) through a utility patent or the ornamental design of the product’s shape through a design patent.

Due diligence saves money in the long run

Due diligence in searching for a competitor’s patents at the beginning of the design and manufacturing process may save more money in the long run since it is typically less expensive to make adjustments to a product earlier on during the design and manufacturing process than to make changes to avoid infringement after launch of a product.

Assignee search

An assignee search can be conducted on the patent office website for utility patent and design patent applications to determine whether your competitor has obtained or is seeking patent protection on their product.  Be aware that the assignee search may not uncover all utility and design patents of your competitors because there is a period of secrecy during which the public cannot access patent information about others.  As such, the assignee search cannot uncover filed but not yet published applications.  Nonetheless, the assignee search is a cost effective method of searching for potentially relevant patent documents.

Crocs litigation

The following case involved a copycat footwear that looked similar but not identical to Crocs.  The copycat footwear was being sold by quite a few companies.  Crocs had a design patent directed toward their footwear and sued these companies.  Design patents protect the ornamental look of a product.  Design patents do not prevent others from incorporating or copying a utilitarian function – that is the function of a utility patent.  Fortunately for Crocs, recent cases have broadened the scope of protection afforded by a design patent.  Crocs was ultimately successful in obtaining a judgement of infringement against at least some of the eleven companies.

Standard for design patent infringement

The present case clarifies the new standard of design patent infringement which is the ordinary observer” test.  Under this test, infringement exist if the ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.  The Court emphasized that the test looks to the overall design and does not place undue emphasis on details. In comparing the accused product and the patented design, the Court conducted a side by side comparison and looked to the overall effects of the patented design.  For example, in the present case, one of the overall effects of the of the patented design that helped the Court to decide that the copycat footwear infringed the design patent is that the patented design created a focal point through the convergence of multiple major design lines and curves which was incorporated into the copycat footwear.  The Court held that despite minor differences between the accused product and the patented design, the accused copycat footwear still infringed Crocs’ design patent.  Crocs, Inc. v. ITC, 2008-1596 (Fed. Cir. Feb. 24, 2010).

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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  1. Ken enos says:

    Can I copy a competitors product if it is not patenetd?

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