Monday, April 19, 2010

Exempting Repair Parts from Infringement

Today's post is by Michael Mathaisel, a registered patent attorney here at Lando & Anastasi.
Congress is currently considering an amendment to the patent statutes which would carve out an exception from infringement of design patents for repair parts. The Access to Repair Parts Act, H.R. 3059, as it is currently worded, would exempt liability for making, selling or using any component product whose “sole purpose” is to repair another product “so as to restore [the latter’s] original appearance.” Auto manufacturers, including Ford Motor Co. of Dearborn, Mich., are arguing strenuously against adopting this provision because, in their view, it would open a Pandora’s box that will lead to the evisceration of design patents for repair parts, and subject unsuspecting consumers to “knock-offs” of inferior quality. On the other hand, members of the repair and insurance industries, including the Quality Parts Coalition and the National Association of Mutual Insurance Companies, among a growing roster of groups, believe the changes are necessary to promote competition, offer consumers more choices, and hold down prices. However, the merits of these arguments, and the benefits of the proposed legislation, are somewhat dubious.

The words “sole purpose” jump out of the proposed legislation as critical, yet unclear: how is the sole purpose of a repair part determined, if in fact there is only one purpose? If H.R. 3059 is passed in its current form, courts will surely be faced with construing this phrase.

It is clear that design patents only protect the appearance of a product, and not the product’s functional features. At times, however, it can be quite difficult to separate the ornamental aspects from the utilitarian ones. For example, the hood of an automobile performs a number of functions. Most obviously, it covers the engine compartment and contributes to the overall appearance of the vehicle. There is little doubt that these are ornamental attributes.

But the hood also serves other important roles: its design, in conjunction with the grille, lamps, fenders, windshield, and other parts, contributes to the aerodynamics and stability of the vehicle and directs fresh air to feed and cool the engine. These attributes in turn affect performance and fuel economy. The hood must provide adequate clearance for the engine, while not interfering with the driver’s view. The hood also serves several safety functions, including improving the crashworthiness of the vehicle. While certain visual aspects of the hood are merely there for looks, automotive designers have become quite adept at melding style with engineering. At times, the two may become indistinguishable, and, arguably, inseparable.

Could a replacement hood that is visually indistinguishable from a patented hood serve no purpose other than to restore the vehicle’s appearance? One could argue that the “sole purpose” of a certain replacement part is to restore the vehicle to a safe and operable condition, and that the appearance of the part is merely coincidental to its function. This is because the part may be but one component of a larger collection of parts all designed specifically to work in concert with each other. Indeed, the visual aspects of the repair part may actually be dictated by its operation as one proverbial cog in the machine, in which case its “sole purpose” is not visual, but rather critically functional. The hood example can be extended to include many other automotive repair parts: headlamps, door panels, trunk decks, spoilers, and so on. The same analogies also apply beyond the realm of auto repair.

Utility patents will continue to offer the appropriate protection for the functional aspects of any product, and should be sufficient to allay the concerns of the automakers when it comes to repair parts (at least those entitled to patent protection). Only when a repair part is made in a manner that does not infringe a utility patent, but does infringe a design patent for the “sole purpose” (whatever that means) of restoring the vehicle’s original appearance, is there potentially cause for concern by the automakers if the present bill is enacted. I suspect such cases will be few and far between.

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