Hunton Retail Law Resource

Design patents can be a useful way to complement an IP portfolio because they can protect the way a product looks instead of how it works. Many consumer products can be defined this way, either in conjunction with, or even in lieu of, utility patents. Where utility patents cover a technical innovation, design patents must claim “ornamental” designs and cannot cover a “primarily functional” design that is essential to the use of the covered product.

A recent case from the Federal Circuit illustrates how design patents can protect consumer products from competitors or copycats. Ford Global Technologies, LLC, used two design patents, one for a design of a vehicle hood (U.S. Patent No. D489,299) and another for a design of a vehicle headlight (U.S. Patent No. D501,685), to prevent aftermarket auto parts distributors from selling replacement auto body parts. Ford brought an action at the International Trade Commission (ITC) against the Automotive Body Parts Association (ABPA) alleging that several of the association’s members were infringing on Ford’s design patents. The parties settled the ITC action, but the ABPA later sued Ford in the Eastern District of Michigan, asking the court to invalidate Ford’s design patents. When the district court declined to do so, ABPA appealed to the Federal Circuit.

ABPA argued that Ford’s design patents were improperly functional. According to ABPA, the patented vehicle hood and headlight designs are aesthetically compatible with the Ford F-150, and there is a functional benefit to this aesthetic fit. The Federal Circuit disagreed that this aesthetic fit is functional, finding that the aesthetic of the design is based on the ornamental aspects of the design, not the functional aspects, and so are properly within the scope of design patent protection.

ABPA also tried to get around the design patent protection by urging the Federal Circuit to apply the patent doctrines of exhaustion and repair. These doctrines would permit a customer who has purchased a patented product to use, re-sell, or repair that product without infringing the patent. But, as the Federal Circuit noted, the patented product in this case is the vehicle hood or headlight, not the entire truck, and the exhaustion and repair doctrines do not permit the patented product to be entirely replaced.

This case is a good example of how companies can benefit from design patents covering the look of a consumer product, whether or not the consumer product is technologically innovative. While many technological aspects of the Ford F-150 are no doubt protected by Ford’s utility patents, it was Ford’s ornamental designs that protected the company from competitors in the secondary market.