S1 E19 Enforcing a design patent with Wayne Carroll

S1 E19 Enforcing A Design Patent

Did you know that many Amazon sellers will look for popular products on Amazon and copy the product to sell it under their own brand? Design patents can be very effective at stopping others who are copying your successful product. For example, if Amazon agrees that a product being sold infringes your design patent, they can shut down the seller’s entire store and hold money that would have gone to the seller until the complaint is resolved. Design patents are very useful when someone is trying to copy your product exactly. A design patent is enforced more like a trademark than a utility patent. The courts look at whether the design of the accused infringer would lead people to believe that it is from the same company or designer as the images in the design patent. The drawings of a design patent are critical. The drawings define what your design patent covers. As we discussed in Episode 9, the claims of a utility patent are words that describe physical elements or method steps. In contrast, the claim of a design patent states that the claimed invention is the design shown in the drawings. There is a balance between showing too much and not enough. When a court evaluates a design patent they consider what was the closest publicly available design of others when the design patent application was filed. The enforcement of the design patent must be within the differences between the closest prior design, and the patented design.

What you need to do: Start with Strategy - what is your goal for enforcing your design patent Research and evaluate the scope of your design patent based on prior designs Gather evidence and evaluate the chance of success before sending a cease and desist letter. Consider Amazon or other platforms to enforce the design patent, and then move to litigation according to your strategy. Continue to monitor for infringers.

TAKE ACTION Schedule a free consultation to discuss enforcement of your design patent.

Our next episode covers Defending against a design patent cease and desist.

BIO: Wayne Carroll is a highly experienced intellectual property lawyer with over 15 years of experience. He holds a Juris Doctor degree with a concentration in Intellectual Property Law from Suffolk University Law School, as well as an undergraduate degree in Electronic Engineering Technology from DeVry University. Wayne is the CEO and Attorney at Inspired Idea Solutions, LLC, a firm he founded in 2013, where he specializes in patent strategy, patent prosecution, trademark strategy and registration, and copyright litigation.

In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or [email protected]. You can also connect with Wayne on LinkedIn.

Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.

TAGS: IP Strategy, Business Strategy, Patent Protection, design patent, AmazonSellers, product copying, brand protection, patent enforcement, trademark enforcement, utility patent, design patent drawings, prior art, infringement monitoring, platform enforcement, patent litigation, patent strategy, defending design patent, patent consultation, evidence gathering, patent evaluation, patent cease and desist, patent enforcement strategy, prior art search, patent infringement, design patent enforcement