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Warner Norcross + Judd LLP is a corporate law firm with over 230 attorneys serving clients in nine offices throughout Michigan. Among the largest law firms in Michigan, Warner works in virtually all areas of business law.

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In a long running legal dispute with an aftermarket trade organization, Ford Motor Company recently survived a legal challenge to its design patents for F-150 replacement parts.&nbsp; Responding to a summary judgment motion, Judge Michelson of the U.S. District Court for the Eastern District of Michigan (Detroit) declined to adopt arguments that would have invalidated not just Ford’s design patents, but design patents covering nearly all aftermarket automobile parts.&nbsp;<a href="https://dlbjbjzgnk95t.cloudfront.net/1014000/1014230/https-ecf-mied-uscourts-gov-doc1-09719856886.pdf" target="_blank" rel="noreferrer noopener">Read the Court opinion here.</a>

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Design patents are routinely issued to manufacturers across all industries to protect new product designs. Design patents receive the benefit of a fifteen-year patent term and are typically granted less than twelve months from filing. In the recent legal dispute, Ford’s design patents covered the ornamental design of a hood and a headlamp for the Ford F-150.

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Design patents protect only the novel, ornamental features of a patented design. The flipside of protecting ornamental designs however is that function is not protected. However, nearly all products also have some function. The Patent Office balances this tension by requiring the patented design to be&nbsp;primarily&nbsp;ornamental based on the overall appearance of the article.&nbsp;

In the context of litigation, defendants can assert lack of ornamentality as an affirmative defense to infringement. However, it is exceedingly rare that a court will cancel a design patent simply because the underlying product also has functional value. In fact, the relevant Court of Appeals has affirmed a cancellation of a design patent as being functional in only one instance. In that appeal, the canceled design patent covered the ornamental design of a key blank that was the “inevitable result of having a shape that is dictated by functional concerns.”

Ford survived the summary judgment challenge by pointing to the nearly dozens of alternative hoods and headlamps for the F-150. The existence of other hoods and headlamps suggested to the Court that the patented designs, while functional in some respects, were not “dictated by functional concerns.” Two examples of alternative aftermarket products from the&nbsp;<a href="https://dlbjbjzgnk95t.cloudfront.net/1014000/1014230/https-ecf-mied-uscourts-gov-doc1-09719856886.pdf" target="_blank" rel="noreferrer noopener">Court’s opinion</a>&nbsp;are shown below, next to the patented hood and headlamp designs:

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Various other arguments were unsuccessfully advanced by the trade organization, which may ultimately decide to appeal the District Court decision. In the meantime, design patents will continue to be a key component of intellectual property portfolios in the automotive space. If the aesthetic quality of your products are an important aspect of your business, or if you would like more information regarding design patents, please contact Vito Ciaravino or any of the intellectual property attorneys in our Automotive Practice Group.

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Design Patents: Will Design Beat Function Every Time?

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Design Patents: Will Design Beat Function Every Time?

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