Design Patent VS Utility Patent
By: Kayla Forrest
Amazon allows a Rights Owner to report trademark, patent, and copyright infringement. As well as counterfeit. Once reported for infringement it can be difficult to get Amazon to see anything other than the Rights Owner’s side.
That can especially be hard with patent infringements.
The types of patents:
A patent protects an invention, but there are different types of patents.
A design patent protects how an invention looks.
How an invention works is protected by a utility patent.
With a design patent, another party cannot copy the look of the item. While the overall function cannot be copied if a utility patent has been registered.
Both patents can be filed for a single invention.
Steps taken when applying for a patent:
Certain steps must be taken, and specific information should be submitted when applying for a patent.
First patent searches must be done. An invention cannot be patented if another patent already exists.
Although many things can make an invention stand out. “Claims” can be added to the patent details that point out the distinctive subject matter for the invention. The “claims” must go into enough detail that the invention could be readily reproduced.
Pictures, sketches, texts are needed when attempting to register. This also applies more to the design, but it is also used for utility.
When acquiring a design patent, the invention must be useful and functional. Art cannot be patented (that’s copyright).
When a patent has fully registered the term for a design patent is 15 years and a utility patent is 20.
Amazon and patents:
Each patent is handled differently when infringement is reported and when the Seller appeals.
When patent infringement is reported Amazon must look to ensure the patent registration is still valid. If the patent is still valid Amazon may move forward in its investigation. From there a design patent is compared to the reported ASIN. If the items could easily be confused for each other then the ASIN will be taken down.
Utility patents are very different. Because appearance does not matter with utility and there is not a way to test functionality, Amazon is legally required to take the side of the Rights Owner. The ASIN will be taken down.
Please know that Amazon does work with a legal team so that they can understand intellectual property and infringement.
Amazon attempts to work on these issues with what they feel is going to be best for buyers and Rights Owners.
Appealing different types of patent infringements:
Appealing to these types of infringement can be frustrating.
With utility patents, it is more difficult. It is best to try to work with the Rights Owner so that the claim can be removed. Admitting fault or showing that the product’s operating differently is a good route. Keep in mind that a Right Owner might not be willing to retract.
If Amazon must be contacted in order to appeal there may be some roadblocks. It must be proven to Amazon that an error occurred.
When working with Amazon they will be more hesitant to hear the rebuttal. It takes good, solid information to appeal to that issue.
Design patents on the other hand can be appealed by showing Amazon the exact differences between the product and the patent. If it can be proven that the items look different then the enforcement was invalid. The different patent types must be approached differently. Keeping the strategies separate is going help resolve these issues more effectively.
***Always try to reach out to the Rights Owner first when attempting to appeal for any intellectual property infringement claim. Getting a retraction is the best way to get reinstatement. ***
Kayla focuses on appeals for Amazon account and ASIN reinstatements. Kayla has 4 years of Amazon experience where she worked in Seller Support and as an Investigation Specialist. In those roles, Kayla dealt with escalations and focused on FBA, intellectual property rights, as well as brand and product gating. When not helping clients save their Amazon accounts, Kayla can be found gardening or cooking with her two children and husband.