USPTO considers whether to carve out exception to infringement of design

The US Patent and Trademark Office (USPTO) and Congress are re-examining the extent to which the design of a component part of an article of manufacture should be protected.
In 1989 Representative Richard Gephardt introduced HR 3017 to amend the Copyright Act in order to extend protection to the industrial designs of useful articles. While this and subsequent bills were supported by the automotive industry (which sought to reclaim the lucrative repair parts aftermarket), insurance companies and consumer groups opposed the legislation because of its likely effect on pricing. Although the US Copyright Office testified in support of such bills in view of a perceived gap in legal protection for designs of useful articles, the bills did not pass in Congress.
More recently, automobile manufacturers have adopted a strategy of protecting the designs of their exterior vehicle parts via design patents. Design patents offer a narrow scope of protection limited to the novel, ornamental features of the patented design as seen through the eyes of the ordinary observer, with the usual attention of a purchaser. If the resemblance between an allegedly infringing design and a patented design is such as to deceive an ordinary observer (inducing him or her to purchase one design supposing it to be the other), there may be infringement of the design patent.
Automobile manufacturers have been attempting to enforce these design patents against third parties importing and selling generic repair parts at lower cost. For instance, in 2005 Ford filed a Section 337 complaint before the International Trade Commission (ITC) claiming infringement of its design patents by manufacturers and US distributors of certain aftermarket parts for the Ford F-150, in violation of the Tariff Act 1930. The administrative law judge determined that three out of 10 of Ford’s F-150 design patents were invalid, but found that seven were valid and infringed.
In March 2007 the ITC issued a notice of its decision not to review the determination of the administrative law judge. The ITC further sought and received comments from interested parties in the automotive and insurance industries, as well as consumer advocates, on the issues of remedy, the public interest and bonding. A petition for reconsideration of the decision not to review the judge’s finding was subsequently denied, and a general exclusion order was issued.
Meanwhile, there has been a long-running debate over the extent to which replacement parts should be entitled to design protection in the European Union, where efforts to harmonize the national laws and the adoption of a Community-wide registration system have also encountered some obstacles.
In response to the comments of consumer advocates to the ITC and the debate in the European Union, Representative Zoe Lofgren (California) introduced HR 5638 to amend the Patent Act by providing an exception from infringement of a design patent for a component part of an article of manufacture “if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance".
In May 2008 Ford filed a new complaint with the ITC against manufacturers and distributors that are allegedly infringing its Mustang part designs. Three days later, the USPTO announced a 'listening tour' on the issue of design protection of automotive parts. The USPTO has thus been meeting with representatives of the automotive and insurance industries, consumer advocacy groups and other interested parties with a view to adopting a position to recommend to legislators, which is likely to be after the inauguration of the next US president.
Matthew D Asbell, Ladas & Parry LLP, New York

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