It is no secret that most products sold in the U.S. market are manufactured abroad, most often in China. Although outsourcing the manufacturing process has multiple advantages, such practice has several significant risks. First and foremost, because a foreign manufacturer has physical possession of your mold, exercising control over the use of that mold is next to impossible. Often, a manufacturer will continue producing products using your mold even after fulfilling your order. What happens with the surplus inventory? Simple: the manufacturer will sell it to any willing purchaser, usually your competitors. Because your competitors did not have to invest into R&D associated with the product and did not have to invest into building the mold, they can undercut you on the price of the end product. Sounds unfair? It is. What can you do to protect yourself? Apply for a design patent.
What is a Design Patent?
A design patent protects aesthetic features of a product. We previously shared our insights into the underutilized benefits of the design patents in this article. To be eligible for a design patent, give your product a unique aesthetic feature that has no practical function and is there purely “for the looks.” Then, you can secure a design patent to protect that aesthetic feature. When you design your mold, incorporate the patented aesthetic feature into the mold itself. If a competitor imports a product manufactured using your mold, that product will infringe your patent.
Several quick important facts. Firstly, using USPTO’s Rocket Docket program, your company can secure a design patent in under six months. Secondly, a design patent has a 15-year term, providing your company an opportunity to recoup your investment into R&D and building the manufacturing mold. Thirdly, design patents cannot be invalidated through an IPR. Finally, design patents are generally very jury-friendly and easy to enforce.
Manufacturing your products abroad comes with several important risks. Your mold being used to knockoff your products is a major one. Free legal advice from an IP firm: protect your company by applying for a design patent.
A design patent protect unique aesthetic features of a product.
Using accelerated examination (the USPTO Rocket Docket), your company can secure a design patent within 6 months.
The term of a design patent is 15 years from the filing date.
Because the mold will be the same, secure a design patent.
Yes. if you do not have contractual or IP protection. It is unlikely you can cost-effectively enforce a contract in China. A more efficient option is to secure a design patent.