SS December 2015

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46 SMOKESHOP December 2015 the product manufacturer obtained a de- sign patent on the new product, and later discovers a competitor selling a prod- uct with a knockoff design, the product manufacturer can prevent the competi- tor from infringement. To determine if a third party product infringes a design patent, you compare the accused product to the drawings in the design patent. If the product, accord- ing to an "ordinary observer," looks sub- stantially the same as the design draw- ings, the product infringes the design patent. If successful, the product manu- facturer can force the competitor to stop selling the infringing product for the life of the design patent. One can even halt infringing products at the border with the help of U.S. Customs. This can stop an infringer in their tracks. The product manufacturer can also get substantial money damages for infringing sales. U.S. law provides that, in the case of design patent infringement, the patent owner is entitled to receive damages equal to the infringer's total profits on the sales of any product having the infringing design. Design patents have gained populari- ty in the tobacco arts. The U.S. Patent and Trademark Office classifies all patents ac- cording to a classification system. There is an entire design patent class dedicated to "Tobacco and Smoker Supplies." This class, D27, now boasts more than 2,200 design patents at last count. Design pat- ent owners are not sitting idle as well. There have been several patent lawsuits over the past few years alleging infringe- ment of design patents in this class. PRACTICAL TAKEAWAYS Priority matters. If you come up with an innovative design, you want to make sure that you are protected as soon as possible. The rules have changed in the United States. This country used to be considered a "first to invent" patent sys- tem. We are now a "first to file" system. If you do not protect your design, a com- petitor may file an application on a simi- lar design and beat you to the patent. What can I do if my new product is already out in the public? The U.S. patent laws allow you to file an application on invention within one year of it being dis- closed publicly. Therefore, if you made the new product public within the last year, you may still be able to file an ap- plication on it. Once you get beyond the one year period, the opportunity to seek a design patent expires. You may still seek trade dress protection on the design, but only after the buying public begins to identify the design with your company. Smart companies know that every new product strategy must involve intel- lectual property protection. Utility pat- ents and trademarks still dominate this space. However, several high profile cas- es have shown that design patents sim- ply cannot be ignored. They provide real competitive advantage, especially for those new products in which the design is just as important as its function. Troutman Sanders Tobacco Team, Troutman Sanders LLP, 1001 Haxall Point, Richmond, Va. 23219, Tel: (804) 697-2206, Fax: (804) 697-1339, Web:, Email: bryan. REGULATION FOCUS > SS•1/2H•Virgin Vapor.indd 1 1/22/16 9:48 AM

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