Design Patent
To receive a patent for a design, the fees can range from $1000 to $2000. This is to maintain the patent and keep it active, which means also potentially hiring an attorney to keep it active. A design patent covers unique visual qualities or a manufactured item. This can include articles of manufacture, originality, novelty, non-obviousness, and ornamentality.
The duration of the patent can last 15 years. The downside to this approach is that it can be easy for bad actors to get around, which can lead to expensive and long litigation, as well as bad court trends. The positives in this approach is that it adds value at the sale of your business and you can get rewarded after high damages from bad actors.
Patent laws are designed to provide the granting of design patents to anyone who has invented a new and original ornamental design for an article of manufacture. The ornamental characteristics must be embodied in or applied to such an article. The subject matter may relate to the configuration or shape of an article, surface ornamentation applied to it, or the combination of both. A surface ornamentation design is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern applied to an article of manufacture.
Utility Patent
A utility patent is available for inventions and discoveries that are considered to be new, useful, and non-obvious. The cost of this can range from $5K to $20K plus fees to maintain and keep it active with a hired attorney. The patent covers new uses of machines, articles of manufacture, processes, or compositions and can last up to 20 years. The downside to this type of patent is how expensive it is to register and how much it costs to sue others for infringing on your patent. It can take a long time to be registered by the US patent office, as well is difficult to use in the ecommerce world. The only way if you do need to sue is a long litigation process and potentially bad court trends that do not favor patent owners. However, the pros to all this is that it can add value at the sale of your business, as well as has the potential of high rewards from damages when someone infringes on your patent rights.
Non-Provisional Utility Patent
Non-provisional utility patent is the formal patent application that you will need for the trademark office for your functional invention. A non-provisional utility can cost up to $360 for the filing fee if you do it yourself, or you can hire an attorney to do it for you. Be sure to include any patents pending and registered on your legal page, as well as on your packaging and product.
How to Enforce Copyrights and Trademarks
Our digital world of commerce has made it significantly easier to enforce registered copyrights and trademarks to take down infringers on Amazon, Alibaba, and more. However, patents do not hold this same level of capability. If you are just starting out in your business, here are a few tips on how to protect yourself using copyrights and trademarks that are registered.
DIY Report Infringement
The first is the DIY method. You can report infringements yourself on each platform. If you are finding more than 15 sellers per week, it is best to send a cease and desist beforehand.
If an infringer is on another site, you can send a cease and desist letter. This works for patents too and it is a great approach to have an attorney help with this. The downsides to this approach is that Amazon requires test purchases if the infringement you are reporting is on the product. This can be wildly inconsistent, have arbitrary results, and every platform goes through a different process. We also have received threatening emails from counterfeiters that made the process stressful, which is why going the DIY route is not for the faint of heart.
Hire a Brand Protection Agency
The other option is to hire a brand protection agency that identifies copyright and trademark infringement online and requests platforms to take the listing down. The agency we went with is Edison IP Enforcement, and they did a great job when we could no longer handle the load ourselves. They also were helpful in getting around the arbitrary results that can occur when doing it on your own. The cost for this is $120 per month per platform, with no annual contract and you can pay on a per month basis. Also if you plan on suing, they can help collect any evidence you need for documentation purposes.
Schedule a Case
When I had thousands of new counterfeit sellers popping up every week, the damage that had been done to our business was substantial. My company had to sue in order to get other sellers to stop, because taking them down meant they would only pop back up again. Given the scale of this issue, I opted for Schedule A lawsuits. The lawsuits seek fast injunctions and often result in default judgements to stop online counterfeiters whose operations are often based in China or other foreign jurisdictions where they are almost impossible to identify.
A Schedule A Lawsuit can include up to 400 defendants, can be resolved in 18 months, it must be an international seller shipping to the US, and it freezes defendants proceeds in accounts. The pros of this is it can clean up a mass infringement and you can receive money for the damages done to your business.
Schedule a Lawyer
The firm must file a case that is “sealed.” This means the defendants do not know who is suing them. If not, the sellers can alert other sellers that this is happening and have them pull money out of the account. Bad law firms will not file sealed, and this can be an issue. Check out Seller Defense to find out who to look out for.
Depending on your financial status, you may be able to get your legal work done for free. The USPTO lists pro bono clinics you can check out.
While these laws and regulations focus largely on the market in the US, they do cross over into other countries that have similar copyright and trademark laws that can affect your business. There are a lot of bad actors out there and what can feel like endless counterfeits, but with the right protections in place your business can thrive.
Check the laws and regulations of your official government website for more details on protections you can put in place for your product.