In a previous post titled Design Patents: Will Design Beat Function Every Time?
, we discussed Ford’s win in a lawsuit that sought to invalidate Ford’s design patents covering F-150 aftermarket parts. In a recent precedential decision, the Court of Appeals affirmed the trial court’s decision and reaffirmed the importance of design patents as a key component of a robust patent portfolio strategy.
As the reader may recall, the design patents at issue covered the ornamental appearance of Ford’s hood and headlamp for the F-150. Design patents protect only the novel, ornamental features of a patented design, provided the patented design is not “dictated by function.” Then the question becomes, when is a patented design “dictated by function”?
The Court of Appeals answered this question by laying out several relevant considerations. First, would alternative designs adversely affect the utility of the hood or headlamp? Second, are there any utility patents covering the same designs? Third, does Ford’s advertising tout features of the design as having specific utility?
The first consideration appeared to heavily influence the Court of Appeals, which pointed to the fact that “Ford introduced abundant evidence of alternative headlamp and hood designs that physically fit its trucks.” Two examples of alternative aftermarket designs from the trial court’s opinion are shown below, next to the patented hood and headlamp designs:
Coupled with the fact that there was no evidence of related utility patents or advertising touting the function of these designs, the Court of Appeals found that Ford’s designs were not “dictated by function,” and they were therefore eligible for design patent protection.
Also in its decision, the Court of Appeals declined to adopt special rules for design patents for aftermarket parts. Purchasers of patented products have long enjoyed the right to repair or replace unpatented components
under the “permissible repair” doctrine. The Court of Appeals saw no reason to create an exception for design patents. The Court of Appeals concluded by explaining that while a sale of the F-150 permits the purchaser to replace the hood or headlamps with unpatented alternatives, an aftermarket vender may not create new hoods and headlamps using Ford’s designs.
The recent Court of Appeals decision reinforced the importance of design patent protection for the aesthetic quality of aftermarket parts. As noted above, the existence of even one alternative design can be compelling evidence that the patented design is not “dictated by function,” and is therefore eligible for design patent protection. In addition, the Court of Appeals reaffirmed that design patent rights are subject to the same rules as utility patent rights, particularly in relation to aftermarket products.
If you would like more information regarding design patents, or have questions regarding the value of design patents for your products, please contact Vito Ciaravino
or any of the intellectual property attorneys in our Automotive Industry Group.