Quarles & Brady LLP
This is especially true when the product being sold is a simple disposable or replaceable product, such as a refill cartridge, a duster refill, or a coffee pod. Patent owners can use the takedown procedures available on online marketplaces to remove potentially infringing items from the market. However, manufacturers of knock-off products are becoming increasingly savvy when it comes to intellectual property, and in many cases have designed the product to circumvent existing patent protection.
When developing a patent strategy, companies with products that include disposable components need to specifically consider how they are protecting those disposable components with intellectual property, particularly when the component is simple and easily manufactured. A well-developed strategy for patent filing will allow IP owners to protect disposable components quickly and cost effectively, even when knockoff products are readily available. Below, we provide recommendations for developing a strategy. It can be difficult to obtain utility protection for a refill or disposable product. This is partly due to the simplicity of these products. Design protection, however, provides a simpler and more cost-effective route to obtain patent protection for a disposable refill.
Further, when a design patent application has been filed in connection with disposable products, it can be highly beneficial to keep the patent family alive by filing continuations and/or divisionals for as long as the disposable product is on the market, during which time various additional design patents issue that emanate from the original application filing. The filing of continual applications strengthens the protection for the marketed product and also gives the patent owner the flexibility to target newly-identified knockoff products. If the patent family remains active, i.e., one or more continuation or divisional applications remaining pending with the USPTO, the patent owner can often craft design claims that read on the knockoff product, and can thus respond to knockoffs, even when a manufacturer or seller of the knockoffs has designed the product to circumvent existing IP protections.
In light of the above, when drafting design claims to target knockoff products, design patent owners should consider the use of Expedited Examination for Design Applications, also known as the “Rocket Docket.” Filing a design application as a “Rocket Docket” application can shorten the examination of design applications from one or more years to a matter of months. In some cases, based on our recent experience the time between filing the application and granting the patent can be as little as four months. Once a design is granted, the patent can be used for online takedown procedures. The filing of a “Rocket Docket’ design application is expensive. It requires a $1600 filing fee, and the applicant must perform a search for art that may be relevant to the product being protected. In many cases, however, the potential of increased sales due the faster removal of knockoffs or infringing goods will outweigh any costs associated with expedited prosecution.
