Design Patent and Replacement Parts

Insurance Industry Testimony: “alternatively-supplied collision repair parts typically are 26% to 50% less expensive than the car company parts, and the mere existence of competition for a given part results in the car companies lowering their corresponding part’s price by 8%. The estimated total benefit to consumers from the availability of competitive alternatives is approximately $1.5 billion a year.”

The following chart shows the cumulative number of design patents on “crash parts” owned by the major car companies. (Via insurance industry testimony).

PatentLawPic958

Consumer Federation Testimony: “Our Concern today is that the car companies are now using design patents, not for the important and legitimate protection of the overall design of their vehicles, but to prevent competition when it comes to getting the parts we need to repair our vehicles.:

Damian Porcari (Director of Licensing for Ford Motor Company): “I freely admit that a company can save money by copying a design as opposed to creating, testing, marketing, and selling an original design. This is not a revelation. It has been and will always be cheaper to steal something than to pay for it. This applies to all markets and all products. Our opponent’s argument is no more than a justification to deny all intellectual property rights across the board.”

99 thoughts on “Design Patent and Replacement Parts

  1. Using the example of a fender, would one be able to buy the attachment and safety mechanism (capturing the public held utility functions) ornamented with a surface of plain sheet steel (or other preferable fender material) and install the plain-ornamented replacement part. And then, follow up by having a mechanic reshape the item to the original design shape?

    The purchased item then is not an offender.

    Who would the design patent holder go after?
    You?
    The Mechanic?

    Once installed, it is no longer a separate component. The mechanic would just be restoring the vehicle to the shape you already bought. You are just changing something to a shape you already bought.

    Everybody happy now?

  2. Sorry IANAE, you will have to show me the basis of your “the repair/replacement rule was designed for utility patents” stand for Utility/Design patent differences. All I see is your handwaiving that design patents are not real patents and therefor should be different. Patent protection simply doesn’t run on your feelings and handwaiving.

    Also, the only time that “effectively turn any repair into a replacement” is when you purchase a new part for that repair. You are free to return the design you already own back to how you bought it (exhaustion theory) if you can do so without buying something additional. It is only when you purchase a new item and that item has its rights that you face up to the real issue.

  3. Repair may include replace. When it does, then you must face up to the fact that you are buying things that have their own right to them.

    Sure, that makes sense when we’re talking utility patents. Utility patents are relatively difficult to get on subcomponents, in the sense that there has to be something new and useful about the subcomponent, and still you have to be replacing the subcomponent and not merely repairing it.

    With designs, you can get protection on an almost arbitrary portion of a whole article, without any real statutory or administrative obstacle, and effectively turn any repair into a replacement-of-patented-part. Which is exactly what certain OEMs are doing, as you can see from that graph where their number of design patents went up way faster than the number of models they have (that they only redesign every five years).

    The problem here is that the repair/replacement rule was designed for utility patents, and does not have the same utility for design patents.

  4. “the case that the car owner is repairing his car.”

    If not modular, would the car owner be faced with repairing by replacing the entire car? In other words, if you rule out a smaller sub-component, then you are faced with buying a complete car for a component item that needs replacement in order to effectuate repair.

    Repair may include replace. When it does, then you must face up to the fact that you are buying things that have their own right to them. When it does not, there is no issue.

  5. IBP: you characterize the underlying problem to be solved as damage to a vehicle (as opposed to damage of a component of the vehicle). By so doing, you effectively negate any considerations relating to any part of the vehicle in isolation.

    Yes, that’s right. That’s the whole point of “repair” – the question of whether you’re making/buying a new thing or fixing/replacing a component of a thing. Just because a car is somewhat modular, that doesn’t make it any less the case that the car owner is repairing his car.

    I understand that the OEM would love to have more money, but whether it’s a repair or not depends on what the car owner thinks and does.

    IBP: These basic options are limited by contractual and economic concerns, of course, but all options exist in the first instance. This approach is more fruitful because THE PARTY RESPONSIBLE CAN CHOOSE AT THIS STAGE WHETHER OR NOT TO INCUR THE ADDITIONAL COSTS ASSOCIATED WITH THE PATENT MONOPOLY. Of the 5 options suggested above, only 1 incurs those costs.

    Of the 5 options, not all are always available, and only one would generally be considered an adequate repair. (1) Doing nothing is not even worth considering from an IP perspective, and is not always an option depending on the damage. (2) Repairing original OEM may not be an option, and may not be as good a repair, but might also be infringement if the design patent is drafted just so. (3) Replacing with new OEM is the case we were discussing. (4) Replacing with used OEM is not an option unless such parts are available. So, if you have a commonly stolen car, I guess. (5) Replace with aftermarket is not an option if the design is enforced.

    So, yes, only one option incurs these costs, but the others are either unavailable, unlawful, or inadequate.

    IBP: Let me ask, would you consider the situation to be any different if the patent rights to the vehicle and to the component were owned by different parties?

    Not if the third-party parts came with the vehicle. That would still be repairing the original car. If they were custom aftermarket parts, the owner should probably have to pay for new ones, but that would likely be a practical necessity anyway.

    IBP: And what about the situation where you purchase a UTILITY-patented article, that contains a component that is covered under a SEPARATE UTILITY PATENT?

    That’s different. If you’re replacing (not repairing) a part that is covered by a utility patent, the patentee should get paid.

  6. IANAE–

    “I don’t understand the question, specifically what you mean by “problem” and “solution”.”

    What I mean by “problem” is this: you characterize the underlying problem to be solved as damage to a vehicle (as opposed to damage of a component of the vehicle). By so doing, you effectively negate any considerations relating to any part of the vehicle in isolation.

    But of what benefit is this approach? You suggest that it is better from a practical standpoint, but you consider the viewpoint of only the car owner. It is certainly not practically better when considered from the viewpoint of the car designer/manufacturer.

    Even if one were to characterize the events in terms of the “problem to be solved”, I see no particular benefit in characterizing the damage as being to the vehicle, rather than to a component of that vehicle.

    Further, I think that it is more fruitful to characterize events in terms of the “solution” that is chosen. It is more fruitful because at the solution stage, the party responsible for making whole has options–do nothing, repair original OEM, replace with new OEM, replace with used OEM, replace with aftermarket, if available.

    These basic options are limited by contractual and economic concerns, of course, but all options exist in the first instance. This approach is more fruitful because THE PARTY RESPONSIBLE CAN CHOOSE AT THIS STAGE WHETHER OR NOT TO INCUR THE ADDITIONAL COSTS ASSOCIATED WITH THE PATENT MONOPOLY. Of the 5 options suggested above, only 1 incurs those costs.

    Because of the lopsided nature of the choices afforded, the situation is not inequitable as regards the responsible party.

    It is similarly not inequitable as regards the manufacturer, as patent rights on original parts are preserved until exhausted.

    Let me ask, would you consider the situation to be any different if the patent rights to the vehicle and to the component were owned by different parties?

    Let’s say party A comes up with and patents a really cool taillight design, and party B designs the back end of a vehicle around that design, and patents the resulting vehicle.

    What is claimed and what is disclaimed in each patent, and who is allowed to produce and sell what?

    And what about the situation where you purchase a UTILITY-patented article, that contains a component that is covered under a SEPARATE UTILITY PATENT? Like the blended body panel design patent situation, let’s say that the larger article was specially adapted to take advantage of the particular performance qualities of the smaller article that imbued it with patentability.

    Is the utility patent on the smaller article illegitimate? What if they are owned by the same entity? Different entities? What if they were originally owned by different entities, and one entity ended up as owner of both?

    I’m curious what others think of these situations, as well as IANAE…

  7. So in that case a “repair” to the vehicle can be achieved by a “replacement” of the grille.

    Yes. This is the major disconnect between the two sides of the issue. Car companies are trying to sell a patented replacement component, and car owners are trying to repair a car.

    Therefore, the nature of the damage to the vehicle is aesthetic.

    That’s probably a fair statement about many car repairs, depending on the extent of the damage, but I’m not sure I see the relevance to the patent discussion. If there is damage to the vehicle, the owner is entitled to want to repair it.

    The aesthetic nature of the repair is not the same as for the original purchase. As I have mentioned before, you don’t judge the relative aesthetic appeal of different fenders/grilles/whatever from different OEMs and buy the one you like best. You are already committed to a part having that particular appearance because you already bought a particular model of car. It is more like a case where only one shape will fit than a case where a subjective aesthetic judgment of the part is made.

    1) Why do you think it legally better to characterize the aesthetic damage as being to the vehicle rather than to just the grille?

    I don’t think it’s “legally better”, I think it makes more sense from a practical standpoint. The car owner wants to restore his car to its original appearance, and the sufficiency of the repair is judged on the basis of the car as a whole, e.g. how the replacement part matches the surrounding parts. The buyer does not judge the appearance of the front fender in isolation, and he will not buy a replacement front fender from a different OEM if it looks nicer. He only wants the part that will fix his car.

    From the car owner’s standpoint, it is much easier to get design patents on arbitrary sections of car than it is to get utility patents, so I think the “replacement of a separately patented subcomponent” logic is misplaced.

    2) Considering that patent laws concern the use/sale of an article, how would it be legally useful to characterize the issue in terms of the problem, rather than in terms of the acts that form the solution?

    I don’t understand the question, specifically what you mean by “problem” and “solution”. The problem I see is the disconnect between the registration of a protected ornamentation and a legal framework designed to protect useful articles. The replacement car part industry is one place where it is simply not appropriate to treat designs like patents. You can see similar problems arise when the courts try to “construe” design “claims”, and determine whether they are “obvious”. These concepts are intended for utility patents, and they simply make no sense when it comes to aesthetic features.

    Did you have a third question?

  8. IANAE–

    OK, let’s drill down.

    You said “Yes, but that’s a repair-type aesthetic decision and not an initial-purchase-type aesthetic decision.”

    We are agreed that as long as a part fits and functions, that there is an aesthetic component to the decision.

    We also need to more carefully define “repair” vs “replacement”.

    When you use the term “repair”, you are referring to the reparation of the vehicle–in other words, if the grille is smashed, you characterize that as a damaged vehicle, not simply as a damaged grille.

    So in that case a “repair” to the vehicle can be achieved by a “replacement” of the grille.

    Regardless of how you characterize it, assuming the original grille is not to be repaired, the act you will be performing will be the replacement of the grille.

    So, if you choose to characterize a broken grille as damage to the vehicle, let me ask, what is the nature of the damage to the vehicle? In terms of function, the grille is not typically a structural component, but it does serve to protect the underlying radiator while permitting airflow.

    A cracked grille will still function adequately.

    Therefore, the nature of the damage to the vehicle is aesthetic.

    So whether you characterize grille replacement as a “repair-type aesthetic decision” or a “replacement-type aesthetic decision” shouldn’t matter–the nature of the problem to be solved is aesthetic, and aesthetic issues contribute substantially to the solution of that problem.

    3 questions for you:

    1) Why do you think it legally better to characterize the aesthetic damage as being to the vehicle rather than to just the grille?

    2) Considering that patent laws concern the use/sale of an article, how would it be legally useful to characterize the issue in terms of the problem, rather than in terms of the acts that form the solution?

  9. Maybe you will remind me of the stuff I am making up by linking to the post where you think I made something up.

  10. Oh, I see clearly – it is wrong to ask IANAE to make up his mind.

    I have made up my mind, but that pales in comparison to the stuff you’re making up.

  11. and not an initial-purchase-type and But those don’t infringe the OEM designs anyway,

    So IANAE is now saying that after market copyists do infringe design rights.

    Make up your mind IANAE, I cannot say that you are right in both regards.

    Oh wait, we still havethe argument that design patents are not real patents and do not have real rights. Right?

  12. you do so because you prefer the aesthetics of the original vehicle to the aesthetics of the vehicle that would result after replacement with a non-identical piece.

    Yes, but that’s a repair-type aesthetic decision and not an initial-purchase-type aesthetic decision. Even if you think some other car looks better than yours, you’ll still want the replacement part that matches the damaged part of your car.

    You only care what the replacement part looks like to the extent that a non-identical part would be considered an inadequate repair. Even an identically-shaped part in a non-matching color would be an inadequate repair, regardless of whether you still like (or ever liked) that particular color.

    There is a giant universe of aftermarket parts, that people buy and bolt onto new cars to replace perfect existing components, both functional and aesthetic. Why? Because, in the case of the aesthetic, they prefer the aesthetics of the vehicle that result after replacement with an aftermarket piece, to the aesthetics of the original vehicle.

    Right. Those aren’t repairs. Those are actual aesthetic decisions to buy a particular part they don’t really need because they think it looks nice or will make their car look nice. But those don’t infringe the OEM designs anyway, so they’re only relevant to show that customization and repair are a completely different kind of buying decision for the car owner.

  13. IANAE: “You do care what the replacement part looks like, but you’re not looking for an ornamentation that appeals to your aesthetic sense. You’re looking for a part that matches the damaged part.”

    WHY are you looking for a part that matches the damaged part? To return the assembly known as “the vehicle” to its former appearance, which you find appealing to your aesthetic sense.

    Yes, if it fits mechanically from the get-go, it will be easier to install than if it required customization. However, connection points and fasteners should not be claimed in a design patent, as they are designed in accordance with primarily functional concerns.

    “You do care what a part looks like”, and what something “looks like” is judged by your aesthetic sense. I understand that when you’re buying a replacement part you want one that simply looks identical to the damaged part, but you do so because you prefer the aesthetics of the original vehicle to the aesthetics of the vehicle that would result after replacement with a non-identical piece.

    There is a giant universe of aftermarket parts, that people buy and bolt onto new cars to replace perfect existing components, both functional and aesthetic. Why? Because, in the case of the aesthetic, they prefer the aesthetics of the vehicle that result after replacement with an aftermarket piece, to the aesthetics of the original vehicle.

  14. And of course, by all rights, since one already owns the car, one should own any and all replacement and repair parts, because, well, because IANAE says so.

    If IANAE really said that, he’s not as smart as I thought.

  15. because you’re repairing a Camry that you’re already stuck owning.

    And of course, by all rights, since one already owns the car, one should own any and all replacement and repair parts, because, well, because IANAE says so.

    Good enough for me!

    Is there anything in the USA remotely resembling the long discussions in Europe…

    You mean, besides this one?

  16. I have known people to like the “overall” look of a vehicle, but who were unable to “get past those awful tail lights”.

    I can’t get past the creepy new Mazdas grinning at me.

    Yes, it’s easy to get turned off by a particular feature, and maybe you would even be more inclined to buy a car if you really like what they did from a particular angle, but I think we more or less agree that when you buy a car the car as a whole needs to look good to you.

    For instance, if one needs a replacement part, one considers the design or shape of the part that one is purchasing. Same applies to any part that is visible.

    I discussed that a few days ago, maybe in the other thread. You do care what the replacement part looks like, but you’re not looking for an ornamentation that appeals to your aesthetic sense. You’re looking for a part that matches the damaged part. That’s not strictly a functional utility, but it’s also not a good time to decide whether you prefer the look of the Camry’s hood over the Accord’s, because you’re repairing a Camry that you’re already stuck owning.

  17. Is there anything in the USA remotely resembling the long discussions in Europe about whether protection for the design of parts of complex products should be allowed to extend to “must fit” and “must match” design details. A design for a skin pressing of a door of an automobile, for example, must “match”, no? A design for a lamp nacelle must “fit” no? Should an OEM be able to monopolise these aspects of design, thereby stopping trade in such spare parts as ink or toner cartridges for printers (or perhaps even an inlay for a CROCS shoe)?

    I can see that the shoe inlay and the cartridge are not ornamental but is a pressed (voluptuously sculpted) metal skin for the door of the super sports car ornamental or not?

  18. IANAE:

    “The ornamentation that influences the only ornamentation-driven buying decision is the overall look of the vehicle.”

    I don’t think this is correct.

    For instance, if one needs a replacement part, one considers the design or shape of the part that one is purchasing. Same applies to any part that is visible.

    Your statement MAY be true when an entire vehicle is purchased, but perhaps not even then. I have known people to like the “overall” look of a vehicle, but who were unable to “get past those awful tail lights”.

  19. “The only problem is a lot of angry less intelligent people are making a comeback”

    Are we talking about politics or blogging?

  20. So your saying. Design Patents in the Car Industry are as bad as the Health insurance Industry?
    That’s not a good road to follow. A better road would be to time limits in all elective positions. If Congress can’t weigh each decision and do the right thing for the country. And if the Supremes just made it ok to buy an election. The best thing would be to curb it. Because if Congress doesn’t see. The people do. We are starting to take back the country because they aren’t listening. And people are smarter than the elected officials think. The only problem is a lot of angry less intelligent people are making a comeback. But we all know they are just cowards. And the American People won’t stand for that.Not today! And we have to believe that this Country is not going to step back after it has gone so Far.Because it is the People that made the step forward, not Congress.
    I don’t think the Design Patent is the problem. Curb the control if need be. But not the money and the Genius that made this Country what it is. Why would anyone want to stop that wheel?

  21. psst, Alan – it’s a good thing IANAE didn’t hear you about those scandalous aftermarket thoughts you posted earlier. You would have had to hear from him how wrong you had been in your previous life.

  22. The ornamentation that influences the only ornamentation-driven buying decision is the overall look of the vehicle.

    IANAE is right again. Because we are only concerned with design patents that only deal with the only buying decision of only the overall look of the only vehicle. Because design patents only exist on that item. They do not exist on any sub item, so we do not have to be concerned with those issues. Thankfully, design patents are not real patents and they do not have any real rights, right?

    NAL,

    Don’t make promises you will not keep. I need your four page journal articles for the utility room, next to the throne.

  23. Design patents are the Law.

    Don’t you mean that design patents are the law? Surely you’re not arguing that there’s some kind of fundamental right to a design patent. Are you?

    Wonderful changes in my personal life may have lessoned my participation here, so I am heartened when I read others posting with substance. Thank you.

    Let me be the first to congratulate you. And nice observation on the invention date thread.

  24. The patent protection on subcombinations and portions is not free, and must be earned by meeting the conditions for patentability.

    That would be a very good point, if we were talking about real patents here.

    Design patents cover the shape of a thing, and as long as you just designed the whole vehicle from the pavement up you can probably get design protection on almost any arbitrarily small or arbitrarily dimensioned subset of the whole vehicle. The ornamentation that influences the only ornamentation-driven buying decision is the overall look of the vehicle.

  25. Inviting Body Punches,

    I know that we have disagreed in the past, but on this matter I agree with you completely. Your positions are spot on, both in legal and business contexts.

    Design patents are the Law.

    I would also extend that the dullards are not constrained to Congress, and have taken over (reclaimed?) the large majority of postings on this blog. Positions of substance are considered tedious and unwieldy (WTFLDNR anyone?). Subterfuge and misdirection are applied in the first instances and staying on topic becomes the game, rather than exploring the nuances of the topic.

    Wonderful changes in my personal life may have lessoned my participation here, so I am heartened when I read others posting with substance. Thank you.

  26. The offered self-serving testimony of those parties advocating to end design patent protection on replacement parts assumes what it sets out to prove, and is therefore worthless:

    Insurance Industry – “The estimated total benefit to consumers from the availability of competitive alternatives is approximately $1.5 billion a year.”

    Inherent in their definition of “competitive alternative” is the assumption that there is no design patent protection–if there was protection, any “competitive alternative” would be manufactured under license, the terms of which cannot be automatically assumed to give a 26-50% price break to consumers. In other words, they assume that “competitive alternatives” can only exist in an environment where there is no protection–which is both wrong on its face, and which is simply a restatement of the premise that if there is no temporary monopoly, there is greater competition. A restatement of the premise is neither evidence of, nor argument for, the conclusion.

    Consumer Federation – “…the car companies are now using design patents, not for the important and legitimate protection of the overall design of their vehicles, but to prevent competition when it comes to getting the parts we need to repair our vehicles.”

    Their statement can be re-stated thusly: “…the car companies are now using design patents, not for the important and legitimate protection of the overall design of their vehicles, but for the unimportant and illegitimate protection of the overall design of articles intended to be used in the assembly known as a vehicle.”

    They offer neither evidence nor argument tending to prove that the protection of the overall design of articles intended to be used in an assembly is either unimportant or illegitimate. It is a simple statement of position, and a totally unsupported one at that. Further, there is evidence to the contrary, the best of which is that Congress has chosen to extend design patent protection to just such articles.

    Unfortunately, to many dullards in Congress, such statements are compelling, as style is valued at a premium, and substance is considered tedious and unwieldy.

  27. CarGuy,

    I have never bothered with “fitting in”. Such is vastly over-rated. Whether or not I am the most annoying poster is also not my concern. I am but a mere acolyte to others, whom I dare not even name (OK, mainly because I cannot keep track of the names).

    In my utmost humble manner, I am only seeking to provide thought provoking commentary. When others provide answers to my questions, illumination for all may proceed. Such illumination may be as cutting as laser beams (fricking laser beams attached to the fricking heads of fricking sharks, no less).

    So how about it, CarGuy? How about that “ornamental” utility?

  28. ping,

    Are you now trying to become the most annoying poster (Part 1) ? It’s really clever how you borrow bits and pieces from all the posts to make your post. But it seems like a desperate attempt to “fit in” somehow (Part 2).

    Part 1 is working, Part 2 is not.

  29. Thanks IBP,

    CarGuy – unless the fashion police already have police powers and can pursue “ugly” replacement parts that satisfy both the safety concerns and respect design patent rights.

  30. Succinctly:

    There should be NO exemption.

    After the basic policy decision to extend patent protection to ornamental designs, the remainder of this discussion is economic.

    So what if the patent-protected parts come at a premium? That should be factored into the lifetime cost of ownership of a vehicle, including relevant insurance premiums, which can be determined in advance.

    If a consumer fails to perform such a calculation, they have nobody but themselves to blame.

    If insurers fail to perform appropriate actuarial calculations, they have nobody but themselves to blame.

    There are many solutions–repair the part (exhaustion), find an OEM part at a junkyard (exhaustion), pay what is being charged for parts from the dealer (premium), buy an older vehicle for which aftermarket parts are available (expiration), etc..

    Visually distinct subcombinations and portions of a design both require restriction under MPEP 1504.05 Sub. II: “When an application illustrates a component, which is a subcombination of another embodiment, the subcombination often has a distinct overall appearance and a restriction should be required. When an application illustrates only a portion of the design, which is the subject of another embodiment, that portion often has a distinct overall appearance and a restriction should be required.”

    The patent protection on subcombinations and portions is not free, and must be earned by meeting the conditions for patentability.

    The exemption solution is junk. Remember, patent protection does not last forever, and is voluntary in nature.

    If you don’t like it, don’t buy their product–there are other options.

    And if you do buy their product, exercise your brain and explore repair options, and make sure you know exactly what your insurance coverage is.

  31. CarGuy,

    Pay attention part 1:

    Homey don’t do answers.
    Its like you’re looking to unlock the secrets of the universe.

    Bingo: “trying to get someone else to do it for you

    Pay attention part 2:

    Approval for safety has nothing to do with (ornamental) design.

    Didn’t you recognize that when Alan stated that the functional aspects related to safety are already in the public domain, any “approval” system for capturing the safety aspects for spares is already divorced from design patents?

    That is not an answer – just an observation.

  32. ping,

    Maybe you just need to go sit on a mountaintop and contemplate. Its like you’re looking to unlock the secrets of the universe somehow (or trying to get someone else to do it for you). Hint: the keys to those secrets you so desperately desire ain’t found at the “intersection between ornamental and utility.”

  33. I am reluctant to engage in such a bad-tempered and personal debate – but I suppose that’s the way it is in the online world: and it serves to back up what I want to say – which is that, here in the UK, we had exactly this debate in the 1980s, and it was just as bad-tempered and personal. The US has done well to avoid engaging in this argument for 20 or more years … It’s not pleasant, and there is no single answer.
    I have not had time to read the whole of this thread, but I’ll certainly make time to do so shortly. So I am not trying to answer any points already made – just to share my experience.
    From what I have seen, the Access to Repair Parts Act is trying to do pretty much what our law does: carve out exceptions to allow spare parts makers to compete with the vehicle manufacturers. The vehicle manufactures appear to be raising much the same arguments as they did here, and once again it seems to be Ford who are making the most noise. For what it’s worth – I thought back then that most of their arguments could be addressed through products liability legislation, which we were getting at about the same time. If there really is a problem with a copy (we call these spare parts “spurious” parts – the people who make them don’t seem to consider it an offensive expression) of a car bonnet (“hood”, to you) decapitating the occupants in a front-end collision, which was Ford’s favourite example, an approval system for spares would be the answer. After all, everywhere has approval systems for complete vehicles and I don’t know of anyone who thinks that’s a bad idea in principle (the detail is no doubt more contentious). I don’t think intellectual property laws are the best way to deal with the issues – trademark laws probably least of all.
    I posted a comment on the Access to Repair Parts Act on my motor vehicle distribution blog, http://www.blockexemption.co.uk, and I’ll continue to try to provide a commentary from a UK perspective there and on my IP blog (as well as here) which I hope you’ll find interesting.

  34. How many design patents express the utility of “mental stimulation“?

    How many design patents express any utility?

    What is the intersection between ornamental and utility?

  35. ping Why do we have design patents when the specific notion of ornamental flies in the face of useful arts?

    But does it? US patent law presently allow patents on methods of playing games. Does the utility of “mental stimulation” fly in the face of “ornamental”?

  36. Alan,

    Thanks for the comment – I do understand that the mechanical function of the parts are in the public domain from expired utility patents. And I even understand that the ornamental features of the parts are still protectable under design patent law.

    I understand that they are two different types of protection.

    My question remains: Why do we have design patents when the specific notion of ornamental flies in the face of useful arts?

  37. Dear Wilton,

    You are pedantic, obtuse and tiresome. Please re-read Alan McDonald | Mar 23, 2010 at 11:16 AM and get back to me if you still don’t get it.

  38. Wilton,

    I especially love m0r0ns like you with your lofty proclamations about what certain types of law are for.

    Lofty? Try reading the legislative history of the Lanham Act and the Patent Act. I’m merely paraphrasing what the drafters of each act intended.

    What do you think trademark law is for?

    “If design patent law was about preservation of goodwill, then the 14-year term and the novelty requirement would not make any sense.”

    Guess you know nothing of design cycles or the like. I would think a 14 year term of protection on a fender design would more than impede an after market manufacturer from producing replacement fenders for at least a critical period after product release.

    And why is that of any concern to the “preservation of goodwill”? What do design cycles have to do with “preservation of goodwill”?

    I am aware of how design cycles affect a manufacturer’s business. What I don’t understand is how that is of any concern to protecting the reputation of the manufacturer.

  39. The EU Design Regulation was adopted December 12, 2001 and the earliest possible EU Design Registration effective filing date was April 01, 2003.

    So, broje above gives (nice one, broje) the motivation to file in Japan, and I give a motivation to go foreign, beyond Japan, at the end of the 6 month Paris Convention priority interval.

  40. Ping – The mechanical function of the parts (crush zones, etc.) are be in the public domain from expired utility patents. But the ornamental features of the parts are still protectable under design patent law. They are two different types of protection.

    MM – The increase in the use of design patents was to overcome the increase in insurance companies requiring the use by their “approved” body shops of after market parts to reduce their claim costs.

  41. In trying to understand the graph, and perhaps partially answer Malcolm’s question about what happened to cause this behavior, I note that the American automakers actually acquired less patents after 1998, and then started acquiring more after 2006. These dates correspond to the Fed Cir cases: Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 113 (Fed. Cir. 1998); and Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. Dkt. No. 2006-1562). Goodyear added the point of novelty prong to the test for infringement, thus making it more difficult to find infringement. In contrast, Egyptian Goddess returned to the ordinary observer test, making it easy once more to identify an infringer.

    According to the graph, the Japanese automakers started to file more design patents in the US in 2000 or 2001. On April 24, 1998, the Design Law Amendments bill for strengthening design protection was passed through the Japanese Diet. This law, which had not been amended for forty years, went into force on January 1, 1999. Among other things, this amendment allowed, for the first time, registration of part of an article in Japan. Thus, the increased filings of design patent in the US may be a side effect of the Japanese filing more design patents in Japan, and the ability to file many design patents there on a single article.

  42. I am like a child, having my eyes opened. Thank you for the provoking thoughts Maxie.

    See also the post way back at Mar 22, 2010 at 01:55 PM.

  43. Malcolm, here’s a thought. Readers, shoot it down please, it it doesn’t stand up.

    1. Corporations never bothered, historically, registering designs outside the home jurisdiction. But then Europe created a new Design Registration regime, offering 25 years of pan-European protection, at minimal cost, for auto parts. The offer of such potency, for so little money, was noted in Japan and was too good to ignore. It caused a re-think, at MITI. What MITI thinks today, the JP corporations also think, tomorrow.

    2. Protection in market #3, while ignoring market #1, is not logical. Ergo, file in the USPTO as well.

  44. Alan : Since it is impossible to get a utility patent on yet another fender with crush capabilities, the auto manufacturers rely on design patents to eliminate the issue. Since auto manufacturers are obligated by law to provide vehicle parts for 10 years after the model year of a vehicle, the 14 year design patent term works well for this purpose.

    Alan, do you know when the law creating this legal obligation was passed? Still wonderering what is the explanation for the dramatic exponential increase in design patent filings beginning in the early noughts.

  45. Psst, Alan – don’t let IANAE know about that 10 year legal obligation thingy – that might put a crinkle in his why auto designers do what they do edicts. Not sure if he would be able to pound it out and all; if he had to buy a new part, he won’t be happy.

  46. Clarify one thing for me will you” –

    Maxie, pay attention – Homey don’t do answers. Geesh.

    Alan,

    If a manufacturer cannot rightly get a utility patent, does this mean that the important aspects belong to the public? If the important aspects belong to the public, doesn’t any patent (design) that “eliminates the issue” – or otherwise put “takes from the public” contravene the basis of that manufacturer not getting the utility patent?

    Hiding behind the skirt of a design patent for coverage of non-ornamental aspects should be dissuaded, no?

    As to specifically ornamental (not utility driven) aspects, why again does a design patent further the useful arts?

  47. In a former life I was in-house patent counsel for an auto manufacturer.

    Crash parts (fenders, hoods, bumpers, etc.) are carefully designed to crush and absorb inpact and are a true safety feature of the product.

    It is entirely possible to create a look-alike part that will fit in the location, but will not provide the same structural capabilities. Auto manufacturers want OEM parts only to maintain the structural stability over the life of the vehicle (so they don’t get sued for products liability in the second crash of the vehicle and have to prove it was the non-OEM part that was at fault.

    Since it is impossible to get a utility patent on yet another fender with crush capabilities, the auto manufacturers rely on design patents to eliminate the issue. Since auto manufacturers are obligated by law to provide vehicle parts for 10 years after the model year of a vehicle, the 14 year design patent term works well for this purpose.

  48. Ping thanks. Clarify one thing for me will you. In what follows, how important is the concept of “ornamental”?

    The EU Design Registration: it looks like a patent (grant certificate), it smells like a patent (infringement does not depend on proving copying) and it quacks like a patent (25 year exclusive right) but it isn’t called a patent. It protects designs, whether or not they are “functional”, but they have to be new and of distinctive character.

    Conversely, the EU Unregistered Design Right has a much shorter term, is infringed only when there is copying but, otherwise is like a Design Registration.

    So, is one of these protective rights a patent-type right and the other a species of copyright?

  49. Ping says, “Design patents themselves should be aborted. Someone tell me why we are giving rights out to ornamental things? ”

    No, no, and no. If we don’t give expiring design patents, these ornamental thingeeze will end up as perpetual trade dress items. While rarely a design-patent-covered designe does end up gaining TM type status, the bias is clearly against it. The fact that we have design patents is the main driver of this bias.

    So if you don’t like ornamental design protection, you should be all for design patents.

  50. Its official, the extent of INANE’s car knowledge is that fender’s aint structural. INANE also is confident that if you really want to pimp your ride, you get yourself a pine air freshner, some bumper stickers, and a pair of naked lady trucker mudflaps.

  51. Wilton,

    I especially love m0r0ns like you with your lofty proclamations about what certain types of law are for.

    “If design patent law was about preservation of goodwill, then the 14-year term and the novelty requirement would not make any sense.”

    Guess you know nothing of design cycles or the like. I would think a 14 year term of protection on a fender design would more than impede an after market manufacturer from producing replacement fenders for at least a critical period after product release.

    Gawd, so many m0r0ns, so little time.

  52. IANAE,

    you are right, (wink wink). Nobody said “You give the patentee his rights when the buyer says “wow, that car looks good, I want to buy it”, and you don’t give the patentee his rights when the buyer says “I want to put my car that I already bought back the way it was when I bought it”. Especially since the second action that nobody said involves purchasing a separate item that coincidentally is covered under a design patent. But nobody said that.

    MaxDrei,

    I am glad you find my comments thought provoking, but you need to keep up as I was talking about design patents and was not talking at all about other forms of protection. Nobody said anything about advocating the complete abolition of all of copyright law. Copyright is perfectly fine.

    IANAE is right again – patents are for the useful arts. How did the non-useful and ornamental baby get born?

    Infantcide – Infantcide – Infantcide!

  53. “esign patent law is not about preservation of goodwill; that’s trademark law”

    Goodwill is about public perception. It is protected by whatever means are available.

    And if you don’t think fenders are structural members with specifically engineered characteristics then go stick your head in a crumple zone – you are beyond help and have more empty opinions than knowledge.

    I’m glad this board is full of m0r0ns. Makes my job practicing real law so much easier.

  54. Without getting into all the nuances of Hobbes statement. I have to agree IANAE generally that art and literature is ornamental – i.e., it serves no useful function, just aesthetic functions.

  55. I respect your opinion, IANAE, but there’s a difference between “ornament” and “art,” or, to use a copyright term, between “ornament” and “expression.” A fender might have an ornamental appearance, but is unlikely to be “art.” If it were expressive, we wouldn’t need the design patent, as we’d have 95 years or so of copyright protection for each of Ford’s “sculptures.” And registering a copyright is a lot easier (and cheaper) than getting a design patent.

  56. Proust, Faulkner, and Mann produced “ornamental things”? Tennessee Williams, Bertolt Brecht?

    Whether you enjoy their work or not, I don’t see how you could classify it as anything other than ornamental. It’s not even applied to a useful article, it’s pure non-useful art.

  57. …and I can’t believe he’s serious. Is he advocating the complete abolition of all of copyright law?

    And I can’t believe you are serious. Are you suggesting that copyright law is about the protection of “ornamental things”? Proust, Faulkner, and Mann produced “ornamental things”? Tennessee Williams, Bertolt Brecht? Not that I’m advocating it, but methinks we could eliminate the protection of “ornamental things” without abolishing all of copyright.

  58. “Abort-Abort-Abort!”

    You sir, sound like a liberal mob at a health care rally. If only Stupak was a design patent practitioner…

  59. Ping writes:

    “Someone tell me why we are giving rights out to ornamental things”

    and I can’t believe he’s serious. Is he advocating the complete abolition of all of copyright law? (It helps, I find, to think of design registrations as a species of copyright law).

    Thinking about what the protected work and the accused embodiment have in common is more useful than focussing on the differences. Can there be any doubt that the Crocs product was, here, shamelessly copied?

  60. Constraining the design patents rights depending on when the article covered under that patent is purchased is a birth defect waiting to happen.

    That’s why nobody proposed constraining them on that basis. Unless you mean that design patents should never expire, but that would make them even more like trademarks.

  61. Since I don’t give answers, I will give this observation:

    Constraining the design patents rights depending on when the article covered under that patent is purchased is a birth defect waiting to happen.

    Design patents themselves should be aborted. Someone tell me why we are giving rights out to ornamental things? Like somehow, humanity is enriched because we have a new squiggle? Does this really need promotion? There are NO concerns with safety here, because such concerns would fall under the domain of real patents.

    Abort-Abort-Abort!

  62. If you need to make another purchase in order to return the car to it’s initial appearance, why then does a purchase of a second item void a design patent?

    Who said it voids the design patent? Making another purchase to return the car to its initial appearance after someone breaks it is more or less the definition of repair.

    Exactly how and to what extent do you constrain the design patent holder’s rights? He either has an effective patent or he does not.

    One possible way to constrain the design patent holder’s rights is as proposed in this thread. You give the patentee his rights when the buyer says “wow, that car looks good, I want to buy it”, and you don’t give the patentee his rights when the buyer says “I want to put my car that I already bought back the way it was when I bought it”.

    Quit acting like it’s impossible to find middle ground here, just because you don’t like the middle ground.

  63. Lionel,

    1) Why is the issue debatable? Either the design patent holds or it does not. If you need to make another purchase in order to return the car to it’s initial appearance, why then does a purchase of a second item void a design patent? Does the design patent not cover the second item? Are other patents (i.e. real patents) so constrained?

    2) Where is this origin of legality of symmetry coming from? Would a patentee of a headlight only patent the right headlight and not the left? only the driver’s panel and not the passenger’s? Exactly how and to what extent do you constrain the design patent holder’s rights? He either has an effective patent or he does not.

    The Solomon like cutting the baby in half will not work here (precisely because the Courts will cut the baby in half and we will have two dead baby halves (and nobody happy).

  64. Jam there are two primary issues as I see them

    (1) The owner should be able to return the car to it’s initial appearance. Allowing the company to use a design patent to monopolize the repair parts that look like original parts is arguably a problem. I believe this issue is debateable.

    (2) Symmetry. If we accept that the design patent holder is able to exercise their full rights, then if I bust a headlight, I need to replace both. If I replace a side panel then I need to replace both side panels. This I believe is more of an issue ad one where the design patent holder’s rights should be constrained to a certain extent.

    Having said that, I believe design patents are necessary as the SC has excluded product design from trade dress. Therefore, right now, the only protection for a fanciful and distinct product design are design patents. There is no trademark and little copyright protection available.

  65. Jam,

    The answer is “Yes”.

    But you ask the wrong question. The question you should be asking is “Why do we even allow Design patents since they are not ‘real’ patents?”

  66. I’ll admit my ignorance.

    Can’t a competitor design a headlight or bumper, etc. with a clearly different appearance, but one that fits onto the car just as the design-patent-protected part does. With the different appearance, doesn’t it avoid infringement while remaining an alternative part to consumers who will tolerate the deviation in the orginal overall appearance of the car?

    Perhaps it’s not possible to give a wide-reaching general answer, and perhaps it is harder to answer without more facts, but I’ll take what I can get. Thanks.

  67. There are a million reasons that an automaker would want to file for a design on, say a fender or a grill. Not the least of which, as I pointed out, and you conveniently failed to respond to, is preservation of good will.

    That’s because I responded to it: it’s a canard. Design patent law is not about preservation of goodwill; that’s trademark law. If design patent law was about preservation of goodwill, then the 14-year term and the novelty requirement would not make any sense.

    The point of design patent law is to protect innovative aesthetic designs so that people will make more of them. It has nothing to do with protecting the goodwill of a branded car manufacturer.

  68. Apparently CaveMan bought himself a car. IANAE, looks like you’re the latest lucky stalkee of our local sewer grate / lingerie / primate enthusiast (The SLP Stalker).

  69. CarGuy I won’t answer your questions Mooney (since you have never answered any of ours), but I will make the observation that you are a little too preoccupied with frivolous things like bubbles. In your twisted world any success is just a bubble. Guess that’s just your personal excuse for perennial failure.

    Sounds like JD is having another bad day.

  70. “There are a million reasons that an automaker would want to file for a design on, say a fender or a grill. Not the least of which, as I pointed out, and you conveniently failed to respond to, is preservation of good will.”

    and if they are lucky enough to get secondary meaning, hey, they can have a perpetual exclusive right, instead of a puny “for limited times” exclusive right! How cool is that!

  71. Each part and sub-assembly is separately engineered based on various parameters and the sub-assemblies are integrated. Of course there is engineering to make the parts work as a unit, but the point is not whether the parts are separately designed.

    Of course the point is not whether the parts are separately designed. That’s why I wasn’t talking about that.

    What I was saying, and I’ll type slower this time so you can understand, is that once the car (you know, the thing the companies actually sell) is already designed, the replacement parts are incrementally free to design. They already exist. If OEMs want to recoup their design costs, they can do it on the car. It doesn’t cost them extra design or marketing money to supply replacement parts for their own cars, and they shouldn’t be whining about how unfair it is that their competitors in the replacement part market don’t have to spend money on that either.

    There are a million reasons that an automaker would want to file for a design on, say a fender or a grill. Not the least of which, as I pointed out, and you conveniently failed to respond to, is preservation of good will.

    Wow, you really got me there. You totally called me on not noticing, for example at 1:32 PM today, that a car company might have good reason to file design patents.

    But goodwill is a trademark thing. Goodwill is meaningless unless someone else can sell the same product under a different brand. We’re talking patents now. Not the good kind, but still.

    Using your own holistic theory, if a fender is part of the greater structural design, there may be special materials or manufacturing processes that control the collapse rate or the like. If attempts are not made to prevent cheap replacements from hitting the market, next thing you know, the fender breaks off when it should have collapsed to protect the fuel line from breaking. Now, the exposed fuel line breaks, fuel leaks and ignites and you have flaming Volyotawagons.

    Wow. That scenario is both creative and ridiculous. But tell me more, CarGuy, on how important the fender is to the “greater structural design” of the car. And how every time a car catches fire the make and model are all over the news. And what the big problem is with decent-quality non-OEM replacement parts, since we all already agree that dangerously unsafe car parts are a bad idea no matter who’s making them.

    INANE (Mooney)

    Obvious sockpuppet is obvious.

    Oook.

  72. “I’ll ask you the same question you asked me: “Do you even have the slightest clue how ridiculous you sounds spouting off about what automakers do or don’t do?””

    Well, I’m sure it may sound ridiculous to an armchair quarterback like you, but I’m sure to other car guys it sounds just fine.

    The fact is, a car isn’t just designed “as a whole” as your little frisson laden imaginings based on the voices in your head tell you. Each part and sub-assembly is separately engineered based on various parameters and the sub-assemblies are integrated. Of course there is engineering to make the parts work as a unit, but the point is not whether the parts are separately designed.

    There are a million reasons that an automaker would want to file for a design on, say a fender or a grill. Not the least of which, as I pointed out, and you conveniently failed to respond to, is preservation of good will.

    Using your own holistic theory, if a fender is part of the greater structural design, there may be special materials or manufacturing processes that control the collapse rate or the like. If attempts are not made to prevent cheap replacements from hitting the market, next thing you know, the fender breaks off when it should have collapsed to protect the fuel line from breaking. Now, the exposed fuel line breaks, fuel leaks and ignites and you have flaming Volyotawagons.

    No one will remember that the fender was a cheap aftermarket product, all they will know is that Volyotawagons catch fire when they crash.

    There is always more to the story than you will ever pick up on INANE (Mooney).

  73. I won’t answer your questions Mooney (since you have never answered any of ours), but I will make the observation that you are a little too preoccupied with frivolous things like bubbles. In your twisted world any success is just a bubble. Guess that’s just your personal excuse for perennial failure. So by all means, sit in your dark corner taking shots at the world. Kind of like the homeless guy on the steam grate we’ve all seen.

  74. CarGuy, can you answer my 2:41 pm question?

    One possibility, I suppose, is that Ford decided that hiring attorneys to design patents was a better use of its resources than keeping its car manufacturing workers employed as the (absurd) market for gas guzzling SUV’s started to tank.

    link to wlky.com

    The housing bubble, the giant gas-guzzling “light truck” bubble, and the patent bubble. I guess the last one had more legs. Does the Gropenator still drive his Hummer?

  75. Probably because you ARE Mooney.

    Oook.

    How can you possibly know this?

    You’re the second person today to tell me that if I had more “real world experience” it would be obvious to me that car companies have to spend additional money to design replacement parts completely separately from the original parts on the very same cars they’ve already designed.

    I can see it now. The designers finally finish designing the body panels of a brand new car. They take a step back, stare at it, and say to each other “I wonder what we should make the replacement parts look like, whether the replacement parts will work okay, and whether marketing will approve of the design.”

    I’ll ask you the same question you asked me: “Do you even have the slightest clue how ridiculous you sounds spouting off about what automakers do or don’t do?”

  76. INANE blathers: “It’s not like OEMs have any incremental creating, testing, marketing expenses for their replacement parts. ”

    How can you possibly know this? Like I said, you are quickly becoming the most tiresome and annoying poster since Mooney. Probably because you ARE Mooney.

    If you stopped to think about it, there are people on this board who have decades of patent experience in the automotive arts. Yet you go on as if you imagine yourself to be some sort of authority. Do you even have the slightest clue how ridiculous you sounds spouting off about what automakers do or don’t do?

  77. ping Looks like somebody took an interest in actually using patents to make money.

    Ford was using patents for decades before 2000. What were they using the patents for prior to the exponential growth that begins in 2000 (maybe more like 2005)? What event triggered the dramatic change?

  78. Dear Wilton,

    Aesthetic is in the eye of the beholder. Courts have addressed this issue at length in the tire tread design patent cases. Design patents are not limited to protecting only that which is non-functional. Rather, the design must not be the otimally functional design or the only functional design. In other words, “aesthetic,” for all intents and purposes, means “optional, non-optimal functionality.” A choice in appearance was makable and was made. Res ipsa loquitur.

  79. I have a question: aren’t most car parts purely functional?

    The ones on the (topological) inside are purely functional. The ones on the outside are there to make the car look good. Or in some cases, to persuade you to spend more on a nicer model that actually looks good.

    Try telling the owner of a Ferrari that all that fancy expensive shiny curved sheet metal on the outside of his car is purely functional.

  80. I have a question: aren’t most car parts purely functional? It would seem to me that if there is nothing aesthetic about the design of a particular car part, then a design patent on said part would be invalid, thereby allowing said part to be legitimately copied.

    I’d like to know how often design applications receive office actions in this particular art. I would think that unless Ford’s design patents are mostly directed to the exterior parts of a car, the examiners issuing design patents to Ford are not doing their homework.

  81. How about, to ensure adequate quality standards are met, since a failure of an unlicensed aftermarket part in a crash would enure negatively to the good will of the automaker who did not make or authorize to have made, the part that failed in the crash.

    That is a canard. Such concerns are easily and more properly addressed through trademark law. The goodwill of the source of goods is of no moment to design patent law.

  82. Looks like somebody took an interest in actually using patents to make money.

    Oh, the humanity of it all.

  83. Damian Porcari (Director of Licensing for Ford Motor Company): “I freely admit that a company can save money by copying a design as opposed to creating, testing, marketing, and selling an original design. This is not a revelation.

    It might be a revelation that he’s not competing with people who would ever incur expenses for “creating, testing, marketing”. The people selling custom aftermarket parts do okay, and can probably get their own design protection if they want, but we’re talking about people who want to repair their car with parts that look like the car they bought, most of which is probably still intact.

    It’s not like OEMs have any incremental creating, testing, marketing expenses for their replacement parts. It all goes into the design of the whole car, and the marketing of the whole car, because that’s where people make the meaningful buying decision.

  84. That graph is pretty striking.

    Between 1990 and 2000 – no change in the number of patents.

    Between 2000 and 2010 – a 10 fold increase.

    What the hxll?

  85. “but to prevent competition when it comes to getting the parts we need to repair our vehicles.:”

    How about, to ensure adequate quality standards are met, since a failure of an unlicensed aftermarket part in a crash would enure negatively to the good will of the automaker who did not make or authorize to have made, the part that failed in the crash.

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