Can a Pending Design Patent Application Be Infringed?

The short answer is no—a design patent application cannot be infringed.  Only a granted design patent can be infringed.  However, be aware that a design patent application remains secret until it does grant as a patent which is unlike a nonprovisional application.  Because of this, if you do find out that you are infringing on someone else’s patent, you won’t have much time to mitigate liability —such as by redesigning your product or clearing out inventory.

This contrasts with utility patent applications, which are published as pre-grant publications approximately 18 months after filing. These pre-grant publications give you more time to monitor the application, assess the potential for infringement, and make adjustments to your product or processes to avoid liability.

Let’s explore steps you can take to minimize the risk and financial impact of infringement if and when a design patent is granted.

Potential Provisional Rights: Utility Patent Applications vs. Design Patent Applications

For utility patents, once the application is published as a pre-grant publication, it opens up the possibility of provisional rights, meaning that the patent holder may seek damages for infringement retroactively, dating back to the publication date, as long as the claims in the issued patent are substantially identical to those in the publication. This creates a potential liability window before the utility patent is formally granted.  Fortunately, you can track the progress by monitoring the examination process.

Design patents, on the other hand, do not have pre-grant publications. This means that there is no public access to the design application while it is patent pending. As a result, you are not liable for design patent infringement for activities that occur prior to the grant date of the design patent. Simply put, there is no way to infringe a design patent application because the public has no way to know the scope of the design until it is granted.  Unfortunately, you will be surprised when the design patent does grant and you receive a cease and desist letter.

Avoiding Design Patent Infringement

If you suspect a product is protected by a pending design patent application, the best way to avoid infringement liability is to ensure that your product looks different from the original product. This is because you can make some educated assumptions about the scope of protection:

• Design patent will be identical or near identical to the product you are copying: The design patent has to cover the patent pending design.
• Make visual changes from the product you are copying: Introduce alterations to the shape, contour, or aesthetic features of your product to differentiate it.

Monitoring the Patent Application Process

Another proactive step to minimize your risk of design patent infringement is to continue searching for any granted design patents or utility patent publications associated with the product.

Why?

1. High Allowance Rates: Design patents have a high allowance rate, meaning there is a strong likelihood the design patent application will result in a granted design patent. Note that the Federal Circuit’s 2024 decision in LKQ v. GM broadened the obviousness analysis for design patents and is expected to push that allowance rate down over time.
2. Time Pressure After Grant: Once a design patent is granted, you won’t have much time to make changes to your product to avoid liability for design patent infringement. If the patent owner tells you to stop infringing on their design patent immediately, then you may have to immediately stop selling the device.  This is why it’s critical to monitor patent filings and maintain a proactive approach to give you the most time to change your design or deplete your inventory.

The absence of a pre-grant publication for design patents makes it all the more important to monitor the patent office to get as much warning before the patent owner sends you a cease and desist demand letter.

How to search for design patents?

To search for granted design patents, it’s helpful to have some information about the patent owner, such as their name or the company name. With this information, you can perform an Expert Search on platforms like Free Patents Online, which allows you to specifically search by the patent owner. Avoid conducting a generic patent search, as it may yield irrelevant or overly broad results. Focused searches increase the likelihood of finding the design patent you’re looking for.

Costs and Consequences of Infringing a Design Patent

Financial Penalties for Infringement

If you sell a product on Amazon or other website that infringes a design patent, the patent owner can claim total profits from your sales—not just royalties or damages. For example, if you make $50,000 selling an infringing product, you may owe all of it. This high-stakes risk makes design patents powerful enforcement tools.

Legal Options for Patent Owners

1. Cease-and-Desist Letters: Design patent owners can send demand letters demanding they stop selling the infringing product. Ignoring them could escalate the situation.
2. Lawsuits: Design patent owners can sue you for damages and seek an injunction to block sales. On platforms like Amazon, they can also file complaints, leading to immediate takedowns of your listings.
3. Amazon’s Neutral Patent Evaluation Program: Patent owners can use Amazon’s program for a faster, cost-effective resolution. If found infringing, your listings are removed.

What Constitutes Design Patent Infringement?

Thresholds for Infringement

The “ordinary observer” test is key. If an average buyer thinks your product looks “substantially the same” as the patented design, you’re infringing. This test focuses on overall visual similarity, not minor details.  For example, a patented kitchen utensil with a unique handle shape is copied by another seller. Even slight variations may not avoid infringement if the overall design feels identical to customers.  It’s hard to tell if you are infringing but the more changes you make the safer you are at avoiding liability for design patent infringement.

Limitations of Design Patents

Where Protection Doesn’t Apply?

Design patents don’t cover functional features. For example, if a patented knife handle’s design is purely ergonomic, it may not be protected. Functional innovations belong in utility patents.

Designing Around a Patent

Competitors on Amazon can legally avoid infringement by:

1. Changing the product’s overall shape and decorative features.
2. Adding distinct elements like textures, colors, or logos.

Example: If a patented water bottle features a wavy design, using a straight-sided design with unique graphics could avoid infringement.

The bottom line is to make it look different.

How to Respond to a Cease-and-Desist Letter for Design Patent Infringement?

Receiving a cease-and-desist letter for design patent infringement can be stressful, but it’s important to stay calm and act strategically. By assessing the claims, understanding your options, and seeking the right advice, you can effectively protect your business and navigate the situation.

Steps to Take

1. Don’t Ignore It: Failing to respond may lead to immediate takedowns on Amazon or lawsuits.
2. Assess Validity: Check the patent’s claims and compare them to your product. If your product is not “substantially the same,” you may have a defense.
3. Assess Infringement: Consult a patent attorney to evaluate your options.

Negotiating or Challenging the Patent

• Negotiate a License: If infringement is likely, negotiate a licensing agreement to continue selling.
• Challenge the Patent: If the design lacks novelty or is too broad, you can file for reexamination with the USPTO or argue invalidity in court.

Key Takeaways

• Design patent applications cannot be infringed because they remain confidential until granted. However, infringement after grant can result in significant costs and limited time to respond.
• Utility patent applications differ due to their pre-grant publications, which create provisional rights and allow time to monitor and adjust your product before potential liability.
• To avoid liability for design patents, take these steps:
  • Make your product look different: Ensure clear visual differences from the original product suspected of being protected.
  • Monitor the USPTO for granted design patents: Proactively search to maximize the time available to modify your product or manage inventory.
• The high allowance rate of design patents and their sudden enforceability upon grant make it crucial to stay vigilant and prepared.

By staying proactive, routinely monitoring patents, and making informed adjustments, you can protect your business from design patent infringement risks.

Don’t wait until it’s too late—proactively monitor patents, assess potential risks, and make informed decisions to safeguard your business. If you need guidance or help navigating design patent issues, contact us now at (949) 433-0900 for tailored solutions. Let’s work together to keep your business secure and thriving!