Is patenting replacement parts a smart IP strategy?
If there is a market for secondary product parts, it may make sense to file design patent applications to protect the ornamental appearance of each visually unique component. It is not uncommon for an overall product to be protected by multiple design patents covering individual parts. This gives the IP owner additional rights to enforce against competitors offering replacement parts, aftermarket components or consumables.
What are limitations to design patents for product components?
Design patents do not protect function. To the extent that a product part plays a functional role in the overall product, such functionality would not be protected in a design patent. It is the visual appearance of the component that would be protected by a design patent.
While functionality is one of the most common defenses to a claim of design patent infringement, proving it is not easy. The burden is on the accused infringer to show a particular design is primarily functional. This invariably leads to a counterargument by the patent owner that various other designs could be used to accomplish the same function.
Should you apply for a design patent if the product part serves a functional purpose?
The fact that a replacement part may serve a functional purpose does not disqualify it from design patent protection. Product components may often comprise both functional and ornamental features. A design patent on a product part can still be valid especially if the replacement part has at least some unique look that does not provide a functional benefit.
Timing is critical. It may come as an afterthought to file design applications on individual parts of a product that has already been on sale for quite some time. In such circumstances, the US provides a 1-year grace period for filing both utility and design patent applications.
If your product has not yet been launched, you are in a better situation since foreign filing will still be an option. Keep in mind it’s race to the US Patent and Trademark Office so you do not want to delay.
Can you apply for both utility patents and design patents on the same product?
Yes, companies do it all the time. One strategy is to file at least one utility patent application on the overall product and multiple design patent applications covering key product parts that are more visually unique. Since utility patents take more time and effort to obtain, a key advantage of filing both utility and design patent applications at the same time is the high probability of receiving the grants of the design patents much sooner.
Which product parts should be design-patented?
Focus on those components with the greatest potential for repair or replacement. Ideally, those parts should contain some visual aesthetic that does not serve a functional purpose and does not look like anything done in the past (aka “prior art“). Again, only those parts that have not been publicly disclosed for over a year may be eligible for patent protection.