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How does the disgorgement remedy of design patent law work?

California has three different patent options. The first and most common type is a utility patent, the second is a design patent and the third is a plant patent. Litigation involving potential patent infringement must be handled carefully, as the law allows for various outcomes. This is often observed in design patent law cases that would allow for a disgorgement remedy.

The disgorgement of profits remedy in US design patent law: What is it?

The disgorgement of profits remedy allows a design patent holder to demand repayment of any profits made from sales of the design and any products made using the design. The wrongdoer will be required to disgorge all profits that were wrongfully gained.

What does the disgorgement remedy of patent law attempt to resolve?

Before this remedy made the disgorgement of total profits available, the court’s decision in terms of compensation in a patent law case was nominal. In the late 1800s, it was effectively argued that as the design, and not the function, was the main reason someone might choose a certain product, all profits gained on an item that was only purchased because of the design were owed to the original design patent owner. 

How does this affect the parties involved in the litigation? Ideally, the party that chose to infringe on the patent would lose any profits directly gained from the stolen design. Because this was not an actual damage award, the remedy did not address whether or not the patent owner received fair compensation. The goal was for disgorgement to discourage the wrongful use of a patented design in the first place.

Modern situations that test the practicality of the disgorgement remedy

recent law review identified several reasons this particular remedy presents unique challenges in the modern world. Often, a design patent not only covers the appearance of a product but is also used to protect a product’s intricate components, a specific small part or even an available feature. As these individual pieces can be wrongfully used alongside many components that are original or not patented by another party, ruling in a case of disgorgement becomes increasingly difficult.

As with many modern legal situations, navigating the disgorgement remedy of US patent law requires an experienced hand. The very nature of the remedy allows for great flexibility in modern patent infringement cases. As a patent owner, you should know the serious and varied complications of a design patent dispute.