The rise in counterfeit and infringing product designs over the past few decades can be largely attributed to the globalization and segmentation of supply chains, the increase in additive manufacturing capabilities, and the explosion of the Internet as an international trading platform. These attributes are not going away, so businesses will have to take steps to protect their brands and product lines.
As many startup organizations to Fortune 500 companies are unfortunately aware, counterfeiting typically evolves through the following four stage destructive lifecycle: Entry, Growth, Critical, Fatal.
After a successful entry of a genuine product, bad actors seize on a market opportunity and sell inferior knock-offs at the expense of the genuine supplier, until the underlying brand has been damaged and the market opportunity ends. Then they move onto the next knock-off opportunity.
The acceleration point as the counterfeit situation evolves from entry to growth stages happens quickly, so genuine brand owners must act quickly to survive the illegitimate actions of bad actors. Often companies act by sending a cease-and-desist letter or filing a legal complaint against the bad actor alleging infringement of one or more intellectual property rights. Unfortunately, without an issued patent, the genuine owner may be limited to forms of unfair competition, trademark infringement and copyright infringement. Remember, it can take several years for a patent application to ultimately issue as an enforceable property right.
The good news for genuine brand owners is that the United States Patent & Trademark Office (USPTO) now has an expedited examination option for design patent applications, aptly named the “Rocket Docket.” Design patents protect the ornamental design of an article or product (configuration, shape, surface ornamentation, etc.) and are used to protect against copying. Companies such as Microsoft, Nike, Goodyear, Apple, Samsung, LG, and Honda increasingly include design patents in their IP portfolio to protect their products against copying.
The Rocket Docket cuts the overall length of time that a design patent waits to get initially examined down from about 13 months to about 5-6 weeks, which means that the genuine owner will have another tool at an earlier time in the lifecycle to battle against the bad actor.
In exchange for the expedited examination, the USPTO will require an additional fee ($450 for small entities) and the following items:
- Expedited examination request is filed (Form PTO/SB/27 should be used);
- The design application is complete and includes drawings in compliance with 37 CFR 1.84 (see 37 CFR 1.154 and MPEP § 1503 concerning the requirements for a complete design application), or is an international design application designating the United States that was published pursuant to Hague Agreement Article 10(3);
- A statement is filed indicating that a pre-examination search was conducted (a search made by a foreign patent office satisfies this requirement). The statement must also indicate the field of search such as by U.S. Class and Subclass (including domestic patent documents, foreign patent documents and nonpatent literature); and
- An information disclosure statement in compliance with 37 CFR 1.98 is filed.
So, if you are facing competitors, or if your design is in an area where counterfeits are a concern, then consider filing an expedited design patent application as soon as the industrial design phase of your product is complete so that you have a better chance at stopping counterfeits and infringers at an earlier stage in the counterfeit lifecycle.