Congress Considers Significant Limits to Design Patents

By Gene Quinn
August 3, 2012

Congressman Issa, sponsor of the bill that would gut design patent rights in the automotive industry.

The U.S. House Judiciary Subcommittee on Intellectual Property, Competition, and the Internet held a hearing August 1, 2012, on H.R. 3889, the “Promoting Automotive Repair, Trade, and Sales Act” or PARTS Act, legislation introduced by Representatives Darrell Issa (R-Calif.) and Zoe Lofgren (D-Calif.). During the hearing, subcommittee members listened to testimony from Rockingham Group President and CEO W. Neal Menefee and Consumer Federation of America Public Affairs Director Jack Gillis, who emphasized the benefits of the PARTS Act to consumers and stressed the balance it strikes. And if you believe that I have a bridge to sell you!

Rockingham Group of insurance companies is a member of the National Association of Mutual Insurance Companies and the Property Casualty Insurers Association of America, both of which are members of the Quality Parts Coalition (QPC), which is another industry group with what appears to be a horribly misleading name.   The QPC has stated its goal as being none other than securing a permanent legislative change to U.S. design patent law to (in their words) “protect the consumer’s rights to lower-cost alternative replacement parts.”  In other words, they don’t like design patents and would rather see them go away.

Frankly, it seems to me that the QPC doesn’t really care for Original Equipment Manufacturers (OEMs) or original parts. Instead the QPC seems to prefer imitation parts, which is why they don’t particularly like innovators obtaining design patents that protects the designs they spend a lot of time, money and energy to produce. In my experience those replacement parts that are not acquired from OEMs just aren’t of the same quality.  How they can get away with a name like “Quality Parts Coalition” is indeed interesting.


Of course, what the QPC position presupposes is that there is a right to lower-cost replacement parts in the first place.  Such a right sounds good, but it isn’t exactly enshrined in the Constitution.  On the other hand, patents are enshrined in the Constitution.  Simply stated, the position of the QPC is so typical.  These patents are getting in the way of what they want to see happen, so they want to see them abolished.

In his testimony, Menefee reiterated the purpose of collision repair parts is only to restore the vehicle’s “original, pre-accident appearance,” and that the PARTS Act in no way affects a car company’s ability to innovate. “The PARTS Act would do nothing to deter car companies from obtaining 14-year design patents on their collision parts and enforcing them for up to 14 years against other car companies,” Menefee explained.

Nothing?  Really?  Even without knowing what is in the bill, just learning the stated purpose of the QPC probably has you wondering at least a little — and it should.  The bill actually completely and totally guts the design patent rights of those obtaining such patents as they relate to component parts for motor vehicles.  Here is what the bill actually says:

With respect to a design patent that claims a component part of a motor vehicle as originally manufactured —

(A) it shall not be an act of infringement of such design patent to make or offer to sell within the United States, or import into the United States, any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured; and

(B) after the expiration of a period of 30 months beginning on the first day on which any such component part is first offered to the public for sale as part of a motor vehicle in any country, it shall not be an act of infringement of such design patent to use or sell within the United States any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.

So I suppose you can get design patents, they just won’t be enforceable if someone needs to infringe in order to restore a motor vehicle 30 months after the first day the component was offered for sale, which may be as little as 1 year (or less) into the life of the design patent.  Essentially, if this bill passes design patents on motor vehicle components will be worthless.

Not to be deterred from the reality of the legislation, Gillis expressed his concern over the “enormous” spike in the number of design patents on crash parts obtained by car companies. These concerns were reinforced by Chairman Bob Goodlatte and by Rep. Issa during the hearing. “This industry has been well established for my entire life. We are talking about a narrow bill to prevent a new expansion that endangers the consumer’s ability to afford repair parts,” Rep. Issa explained.

Rep. Sheila Jackson-Lee, however, questioned whether this bill would further the move of manufacturing oversees. Gillis attempted to shoot down the notion that this bill would in any way hurt American production, offering that 63% of the suppliers Ford has chosen for the 2012 Ford Focus and 50% of the suppliers Chevy has chosen for its 2011 Chevy Cruze are from foreign suppliers. “This isn’t a foreign versus domestic issue. This is a fairness issue, and consumers have the right to choice in the marketplace. This is what this bill will give them.” While Gillis seemed proud of his answer, I really couldn’t tell you why he would think that answered the question.  How does the fact that suppliers are already overseas prove or disprove the point asserted?  If a change in the law makes it more likely for companies to move overseas wouldn’t that just mean that the number of foreign suppliers would go up?  So Gillis’ answer doesn’t really address the legitimate concern raised by Rep. Jackson-Lee at all.

The only witness testifying against H.R. 3889 was Kelly Burris of Brinks Hofer Gilson & Lione.  She started her testimony by saying: “I believe that innovation in automotive design, and potentially the entire industrial design community, will be stifled by legislation of this nature.”

Burris went on to point out the inconvenient truth.  Auto manufacturers employ a lot of people in the United States.

Auto manufacturers consistently lead the world in R&D spending, to the tune of $18-20 billion a year. Design protection encourages innovation and creates jobs in the United States. In fact, fourteen different Original Equipment Manufacturers (OEMs) – most of them headquartered outside the U.S. – maintain design centers in the U.S. to create vehicles that will appeal specifically to American consumers. According to the Alliance of Automobile Manufacturers, there are twenty-one separate design facilities in three states (Michigan, Ohio and California) that account for roughly 30,000 jobs.

One thing is crystal clear.  Rep. Jackson-Lee is absolutely correct to be concerned about those 30,000 jobs because history unequivocally shows us that innovative companies go where they can get patent protection.  Similarly, history shows us that innovative companies vacate countries where patent protection is unavailable, or less readily available.  That is not a matter of opinion, it is a matter of historical fact.  It is utter nonsense to dispute this, and to pretend that curtailing design patent rights will have no impact would be nearly hysterically funny if it didn’t come with such large consequences.

Burris went on to say:

The proponents of this bill claim that consumers “need options.” Well, consumers have many options without a wholesale taking of the rights of our industrial designers. First, there are alternative designs currently on the market that can be used instead of the OEM parts… These aftermarket parts can be offered to the consumer as repair alternatives to the OEM parts, therefore providing that “consumer choice” everyone is looking for. So what if their vehicle doesn’t look exactly like the originally manufactured version?

That is an excellent question.  Where exactly does the right to have a repaired vehicle look exactly like a new vehicle come from?  I don’t find that in the Constitution either, but once again patents are right there in Article I, Section 8, Clause 8.

For crying out loud it isn’t even like these folks don’t have the ability to repair their cars to brand new.  They can if they use OEM parts.  The trouble is that the insurance industry doesn’t want to pay and would prefer to use cheap, inferior parts rather than OEM parts.  So stiffing innovators is a right of consumers and insurance companies and the fact that the casualties will almost certainly be American jobs is just another inconvenient truth.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 35 Comments comments.

  1. Sean Connolly August 3, 2012 10:00 am

    This bill is almost as ironically named as the SHIELD Act. I can’t wait to see the smart phone companion bill.

  2. Dale B. Halling August 3, 2012 4:14 pm

    Another sad attack on our patent system. Darrell Issa does not seem to understand what a property right is. Congressman Issa supported the AIA, this Act, interfered in the Motorola v. Microsoft ITC action. He may hold a number of patents, but he is no friend of inventor’s property rights in their inventions. His positions are similar to the big tech companies, who have a number of patents but have no interest in protecting the rights of individual inventors or startups. He also voted for SOX, Dodd Frank and against the JOBS act to weaken the stranglehold on startups caused by SOX. He clearly does not believe in other people being able to create their own startups. If we are lucky Mr. Issa we be replaced by a Tea Party candidate.

  3. Anon August 4, 2012 9:42 am

    The anti-patent wolves are at the door.

    Vigilance is required.

  4. Roland August 4, 2012 11:50 am

    Putting to one side the important issue of design patent holders rights dilution, the question that immediately arose to me is just how much of a repair is a repair?

    Microsoft hit a very similar problem with Windows 95 when they introduced licence keys and activation, namely: just how much change can be made to a computer before it becomes a new computer and hence in need of a new licence.

  5. Kevin Prince August 4, 2012 1:15 pm

    >”…if the purpose of such article of manufacture is for the repair of a motor vehicle…”

    Um… where in patent law does “purpose” come into play? If I make the exact same part, but my intended use is different, why should that matter? So it’s okay if I knock-off a product if my intended use is somehow more noble than the patent holder’s? I can only imagine where that will lead.

  6. MaxDrei August 4, 2012 5:56 pm

    Nice to see emerging in the USA the argument whether to permit issue and enforcement of patents on auto parts that are either “must fit” parts or “must match” parts, because the debate has been raging, in Europe, for oh about 25 years by now. OED countries, such as Germany, want such patents to be enforceable. Other EU countries, that make the after market body parts for German cars, are against it.

  7. Stan E. Delo August 4, 2012 8:32 pm

    What a disgusting turn of events that the sanctimonious Darrel Issa would have anything to do with legislation even remotely like this. Automotive design and repair is somewhat akin to the design and/or repair of aircraft, for example, which might give one pause to set foot on board a commercial passenger airplane that has been repaired with the cheapest possible “looks just the same” types of parts that Issa and Gillis seem to think would be “good for consumers”. Perhaps they might not think it would be so good, if some members of their immediate family were killed in an auto collision, because the parts used to repair the car they were in *looked like* the original equipment, but were made of cheaper materials. Modern cars and aircraft are carefully engineered and designed using sometimes very important structurally superior materials, in order to save weight and make them as strong as possible for a given price. I can’t help but wonder how many people will be needlessly killed or maimed because of this type of nonsense if it is enacted into law. Do you have any ideas in the matter Mr.Darrel Issa? I wonder how many insurance companies have contributed to your re-election efforts lately?

  8. Tony McStea August 6, 2012 7:23 am

    This has echoes of the old House of Lords decision British Leyland v. Armstrong, which concerned the reverse engineering of an exhaust system of a British Leyland motor vehicle. In this case, the issue was copyright, not design (there was no design protection) and in this case it was held that there existed a right of reasonable repair. It was also memorable for Lord Templeman quoting Tennessee Ernie Ford – the owner of a British Leyland vehicle, he said, owes his soul to the Company store.

  9. Cynical Cyrus August 6, 2012 9:01 am

    Look at it this way: after this passes, Canadian generic drug companies will be able to have their cars brought into the USA for body work since they won’t have to pay OEM prices for replacement quarter panels and the like; as they’re doing that, they can bring cheap pharmaceuticals with them. For the IP pirates it’s a win-win!

  10. Blind Dogma August 6, 2012 11:33 pm

    On the pharm side, shouldn’t a human body have at least the same “repair” philosophy that “stuff” like cars have?

    How would the money then speak?

  11. Stan E. Delo August 7, 2012 12:17 am

    Hi BD-

    I would like to think so, but with Pharma there are much bigger fish to fry, it ssems to me. Just getting a new drug treatment or genome innovation a patent is incredibly expensive, and then there is the need to wait for about 5 or 6 years while the FDA twiddles their fingers to decide if they should allow it to be sold here in the US. I can’t really see where design patents would apply, but I am not a patent attorney, and you most likely are one.

    I agree that the best possible parts and/or methods and medications should be used if at all possible, but this new design patent change proposal has me a bit worried. Why not just allow *mild steel* replacements for *high tensile steel* to be used, just because it seems to be beneficial to the proponents of this bill? Do they actually care that hundreds might die, just to save a few bucks for their apparent *constituents*? I would guess Not, just as long as they get re-elected.

    Pharma and this bill seem to be an apples and oranges comparison to me, outside of your suggestion. But perhaps I digress, and have indulged in a few too many glasses of my new batch of Fatatalistic Fennel, that has a fair amount of Mandrake root extract included, supposedly to induce Magical sorts of effects. Not working for me though so far.


  12. Stan E. Delo August 7, 2012 1:33 am

    Tony McStea writes in toto-

    This has echoes of the old House of Lords decision British Leyland v. Armstrong, which concerned the reverse engineering of an exhaust system of a British Leyland motor vehicle. In this case, the issue was copyright, not design (there was no design protection) and in this case it was held that there existed a right of reasonable repair. It was also memorable for Lord Templeman quoting Tennessee Ernie Ford – the owner of a British Leyland vehicle, he said, owes his soul to the Company store.


    As an American who has owned two Morris Minors, a Morris Mini Cooper, two MG 1100’s,and my currently owned Austin America, after my earlier Austin America gave up the ghost, I can certainly testify to the fact that British Leyland parts were extremely expensive, and usually of a pretty low quality right from the OEM.

    As in the electrical systems and devices supplied by Lucas, otherwise known in some circles as *The Prince of Darkness* To this very day, most Brits own Lucas refrigerators, hence their tendency to drink their beer at room temperature.

    That being said, all of the cars mentioned were far and away the most responsive and fun to drive of any I have ever owned, which seems to inspire great loyalty to all that drive them, despite the mechanical headaches that have caused me to become a *creative* mechanic ever since I was about 19 years old.

    Later I went on to repair Lotus sports cars, which were the real deal created by Colin Chapman, which were totally breathtaking to drive, and somewhat astounding at the time. Imagine flying down a highway at 70 MPH, and then turning left 90 degrees onto a side road without even Touching the brakes. Right into the ditch you might think, but the Esprit and the Elan and the Europa could all do that without so much as a squeak…. They just just Went around the bleeding Corner without a slip, scaring the dickens out of any passengers.

    But they were two different philosophies, where the Leyland cars were meant to be inexpensive and got excellent mileage, and the Lotuses were meant to perform First, but the Elans usually got about about 30+ miles per gallon, as long as you kept your foot out of the throttle, in the interest of not scaring the *kids* too much.

    Apologies to any of my British friends that I might have offended with my comments herein.


  13. Roland August 7, 2012 9:31 am

    Focusing initially on the narrow intent of this bill, namely the restoration of “OEM appearance” by using non-OEM parts, I’m intrigued as to how the supporters of this bill intend to address OEM bodywork warranty issues; I’m sure that Audi’s warrant is typical of all OEM’s in containing the clause:
    “All body repairs will be carried out promptly in accordance with the manufacturer’s technical guidelines, using only approved parts and materials, in order to maintain the original level of anti-corrosion protection”

    I’m also intrigued to understand how the bill’s supporters envisage it will operate in the international market. Here many manufacturers will have design patents first registered in non-US locales. Hence severly limiting both where non-OEM approved parts can be manufactured, transported through and sold. Additionally, without changing the standing of US design patents in the world IP system, the US based-OEM would be able to use foreign legal systems to prevent counterfeiting of US desgin patents.

    No offence taken about British Leyland cars, particularly as you confirm the “cornering like it’s on rails” reputation of Lotus cars..
    As for preferring our beer at room temperature either you’ve had a bad experience or you’re a victim of urban myth; English beer should be served at cellar temperature (12-14C) not room temperature (21C).

  14. MaxDrei August 7, 2012 5:25 pm

    No offence taken. Perhaps Stan has listened too much to a certain UK Prime Minister, successor to Margaret Thatcher who, when he was not complaining about the “bastards” in his own party sitting behind him in parliament, spoke wistfully of the “warm beer” served to those supporting the cricketers on the village green.

    But Stan, I must correct you on one thing. Nobody should put real living English bitter in any fridge, and certainly not one that carries the trademark LUCAS. I always thought other countries chilled their beer to disguise its taste whereas the English deliberately refrain froim chilling theirs because they want positively to enjoy its taste.

    I speak as the former owner of two successive Morris Minors, one of them a rag top. My days as a student. Such fun. And when the clutch link broke in Germany, I crawled under the car, replaced it with a tent peg and carried on towards Switzerland. They don’t make cars like that any more. Certainly not my current A6, which I routinely and with total confidence steer along the Autobahn at anything up to 220kph.

    Not sure i share your worries about unauthorised spare parts. If you go to the authorised dealer, you get genuine spares. I would not dream of taking my A6 to anybody but an Audi dealer. But if you go to a dubious workshop under a railway arch you might get unauthorised spares, whether or not the OEM has got a design patent on each body panel. What are you going to do, to force car owners always take their dented vehicles to OEM-authorised workshops?

  15. Roland August 7, 2012 7:42 pm


    The issue isn’t so much with repairs made under your control, but repairs made by insurers who demand that work is undertaken by their approved bodyshop (remember the QPC seems to be an association of ; often they will also deliver the restored vehicle back to your home/office so the bodyshop is totally invisible. So you have no control or knowledge of whether the workshop is OEM authorised or the provenance of the parts used.

    What is particularly concerning, to the international community, is that the bill seems to apply to all motor vehicles regardless of country of original manufacture. Given we are talking about the US domestic market here, the vehicles with the more expensive panels are likely to be the imports namely the Audi’s, BMW’s, Mercedes etc. Hence we can expect parts for such vehicles to be targets of US-based counterfeiters operating with the consent of US law…

  16. Anon August 7, 2012 10:03 pm

    Just playing devil’s advocate Roland, but if the law permits, that is “counterfeiter” a correct term?

  17. Stan E. Delo August 7, 2012 11:38 pm

    Perhaps it might be useful to clarify what I was saying in my #7 comment, since I have had extensive experience in the structural design and cosmetic appearance of autos quite a while back, and more recently with light aircraft, while helping to restore them to hopefully *good as new* condition.

    In both cases, just the physical appearance does not adequately describe the *design* per se, as the parts are often designed to be made of very specific materials, and if the materials aspect of the design is ignored, which this law seems to suggest Might be possible, they don’t seem to have any idea how dangerous it might be to the welfare of the folks using the vehicles in the event of a crash.

    By way of an exhibit A, consider the widespread use of high-tensile carbon steel, primarily by many Japanese auto makers back in the mid seventies or so, where they could reduce the thickness of the steel by as much as a third, resulting in vehicles that were much lighter and more fuel efficient thereby, and also substantially much stiffer and resistant to deformation, protecting the occupants of the vehicles somewhat better both because of the lower vehicle mass, and the ability to avoid collisions in the first place because they are more agile.

    If you were to make identical parts out of mild steel, the cars would be hopelessly under engineered, and you would be putting yourself or your family at significant risk by driving a vehicle equipped with parts with unspecified standards as to the materials that were to be used. The high tensile steels rust much more quickly as well, which demands a much more rigorous paint/coating design, which failure you all have most likely seem very clearly in the past.


    As regards insurance and body shops, perhaps this example will give you an idea of how strange things have been here in the past. First of all nearly none of the US automakers have been very excited about providing certified factory or dealer repairs, apparently because they are too busy selling tons of new cars to replace them instead of fixing the ones they have already sold.

    While working at Porlier Engineering for several years, doing very high quality repair work, Thane told me a story of a loyal customer of his, whose pristine Jaguar he had repaired a few times in the past. What had happened to her was that someone had seriously damaged her Jaguar, and when she contacted her insurance company, they told her that she would have to get 3 independent estimates for the repair, or they would not be able to help her at all.

    She came to the shop literally in tears, because she didn’t want anyone else but Thane touch her car, and of course the insurance company would only pay for the lowest schlock artist estimate they could get their hands on according to her *Insurance representative*. He told her of her real legal rights here, wherein She gets to decide who fixes her car, and to tell the insurance company to contact her attorney if they had any questions. Thane got the check for the repair in record time of about a week. Case closed, as well as her insurance policy with that company.

    Caveat emptor

  18. MaxDrei August 8, 2012 2:51 am

    Wow, I had no idea that the insurance companies work like that. Great story about the Jaguar. Thanks both.

  19. Roland August 8, 2012 6:34 am

    anon: “is “counterfeiter” a correct term?”

    I used the word because I believe the intent of the insurers and their partners is to commit a deception on the vehicle owner (and potentially on any subsequent owners) through using “knock-off” (non-OEM approved) panels to restore an accident damaged vehicle to its OEM appearance. The legal position only really reflects whether the government does or does not countenance the production of “knock-off” goods and hence whether enforcement and remedies are available through the law.

    I didn’t mention panel performance, as you covered this in comment #7, but totally agree this is a very important aspect, particularly as the bodywork of most cars these days including the glass (I’ll ignore SUV’s) is structural and hence plays an important role in the vehicl achieving it’s safety rating.
    Thanks for clarifying the current position in the US regarding authorised repairs; I can see why there is pressure in trying to create a more consumer friendly repairs market.
    As Tony in comment #8 mentions, in the UK we have benefited from recognising a “right of reasonable repair” and other consumer protections. We still have the 3 independent estimates option, however some years back the insurers realised that they were paying for the production of estimates etc. etc. and could save money by reaching ‘volume’ agreements with a number of bodyshops and hire companies – hence the rise of the approved bodyshop and the convenient insurer managed repair service. Hence (in the UK) with consumer protections, you can (currently) be confident that an insurer repair will also be an OEM approved repair – this also ensures that the insurer will rarely get hit for substandard repairs.

  20. Anon August 8, 2012 12:06 pm


    Yes, I know why you used the term.

    But as I wanted to play the devil’s advocate, your use is improper if teh law changes, because “deception” would itself be an improper description.

    Please understand, I am NOT saying the law is good (personally I think it is crap), but I wanted to point out that your argument’s emotional impact can be nullified rather easily if you choose to use hot-button words (but the words don’t legally apply).

  21. Roland August 8, 2012 4:25 pm


    In double checking my use of the word ‘conterfeit’ I did note the seeming lack of words that describe the situation we would find ourselves in if the PARTS act were to be passed and which did not carry a (negative) emotional tone, reflective of our current view of such goods.

    For my response (comment #19) I did consider using the word ‘generic’ – as used in the (UK) pharma industry to describe medicines produced by third-parties based on expired patents, but felt that this may not be readily understandable to others even though it probably describes quite well the situation if the law changed.

  22. Sean Connolly August 8, 2012 5:16 pm

    At what point would this constitute a regulatory taking? Sure the patent owner holds the patent, but it is worthless without having the power to exclude.

  23. Stan E. Delo August 8, 2012 11:35 pm


    If you think that was surprising, consider this true story that I heard of, which is somewhat illustrative of the *cowboy* attitude of some of the lower quality body shops who specialize in chasing insurance company ambulances here in the US~

    Chris Kerber got the job of fixing a fairly new Subaru station wagon, which had been sideswiped down most of the left side while parked and unattended. He then did his usual totally incompetent *repair* in record time, and he knew that the customer was a regular breakfast customer at the local Beachcomber Cafe on Vashon Island, so he took the car down there and parked it right in front of the window, so his customer could see that it was *done*. The customer came out and said it looked great, like nothing had ever happened, so he endorsed the insurance draft on the spot.

    He then went back and finished his breakfast, while Chris was heading to the local bank to cash the check it seems. When he went out to get in his car, he was horrified to see the huge ripples and faintly disguised dents that Chris had left on the Left side of the car. Chris had simply showed him the wrong side of the car, which was the Right side while standing on the sidewalk.

    It sounds like the British system that Roland mentions is far superior to ours, as everyone is already vetted and they have a good reputation that they really care about keeping. BTW Roland and Max- My remarks about tepid beer were a reference to Guiness and some cheap shot jokes that I had heard about.


  24. MaxDrei August 9, 2012 2:35 am

    Hot off the press today, the English court finds in favour of BMW, asserting its design patent rights against an alloy wheel maker calling itself “Round and Metal”.

    These wheels are so hot, I haven’t yet had a chance myself to read the Decision.

    Stan you remind me of the joke about the three learned gents sharing a compartment on the train from England to Scotland. As the wheels roll over the border, in the wild frontier region, the astronomer remarks “Oh look. In Scotland the sheep are black”. The physicist looks then observes “Not sure I can accept that. What I would say is that, In Scotland, at least one of the sheep is black”.

    The third gent (a patent attorney) mulled it over for a while, then piped up “I fear I have to correct you both. What do we know? In Scotland there is at least one field, and in that field is at least one sheep. And at least one side of that sheep is black”.

  25. MaxDrei August 9, 2012 2:41 am

    Sorry Jeremy and team, in my #24 above, I forgot to credit my source.

    Readers, go to the IPKat blog:

    and then you might even want to join the nascent thread there.

  26. MaxDrei August 9, 2012 2:47 am

    Readers when reading about BMW’s sally into court in London, keep in mind the English “Loser Pays” rule, and how much an English trial lawyer team costs per hour. I dare say that Round and Metal is now out of the business of supplying the BMW aftermarket.

    You might also think it remarkable that it has taken so long for such important legal questions to get as far as a fully reasoned English Decision from the competent court. I suppose, in this type of case, most Defendants simply melt away, when faced with the costs of mounting a defence. Who was financing Round and Metal is what I am now wondering.

  27. Roland August 9, 2012 9:37 am

    ‘Real’ Guiness is brewed in Dublin Ireland and I do recommend it. However Ireland is not part of ‘Britain’ as many Irish people will passionately inform you.

  28. MaxDrei August 9, 2012 10:52 am

    That would be Guinness, I think. The British Isles includes the island of Ireland. The United Kingdom is of Great Britain and Northern Ireland. Great Britain is the biggest one of the British Isles, and consists of England, Scotland and Wales. What I want to know is why are the UK sportspeople at the Olympics are called “Team GB” and why is UK written GB on the front of every PCT publication?

  29. Roland August 9, 2012 12:24 pm

    one of the “joy’s” of a country with a long history, is that you do tend to accumulate names…

    Here is a good resource which will explain all:

    re: “Team GB”
    Basically, the Brit’s had the final word. However, these wikipedia articles provide a better answer:
    Also it should be remembered that the Republic of Ireland (Eire) has its own Olpmic team; a matter an Australian pundit now wishes he had kept his mouth shut! (see ).

  30. Bob August 9, 2012 12:30 pm

    You keep citing the constitution, but I seem to recall you saying that design patents aren’t ‘real’ patents, instead being a way to shoehorn industrial design rights into congress’s enumerated powers. It seems strange now that you now seem to be putting them on the same level as utility patents. Furthermore, replacement parts are functional, often down to the minor details in shape, making granting them in the first place questionable.

    And let’s be honest, the public gets little from not allowing replacement parts to be an arena of free competition. At the very worst case, R&D expenditures will reduce, and the change will be that parts are reused more often, making things generally cheaper for everyone.

  31. Roland August 9, 2012 12:49 pm

    Max re: BMW case

    I like the thoroughness of the investigation; including the consideration of the reproduction BMW logo stickers, that an garage/owner could affix to the wheels. This gives an indication of the perilous course a non-OEM manufacturer of look-alike OEM component parts will have to steer to ensure that they have the protection the PARTS Act affords them.

  32. Gene Quinn August 9, 2012 1:59 pm


    Where did I ever say that design patents are just shoehorned into Congress’s enumerated powers? You are obviously mixing me up with someone else.

    I have quite correctly recognized that design patents only protect the ornamental appearance of a device, and I have NEVER put them on the same level as utility patents.

    Please get your facts straight and don’t try and put words in my mouth.

    Finally… if you want to be “honest” as you suggest… then I have to recognize you are completely wrong about replacement parts. Everyone at all familiar with replacement parts has to know you are completely incorrect as well. Replacement parts are cheaper because they are inferior. Use them if you want, but if you are going to pretend they are equivalent then I’m going to call you on it and point out the clearly erroneous conclusion you reach.


  33. Bobby August 9, 2012 3:28 pm

    I may have been thinking of someone else’s stance. The closest I can find at the moment is you referring to them as often being seen as “the awkward step-sister of utility patents.” However, I would say that they are far less ‘enshrined’ in the Constitution than utility patents, particularly since Article I, Section 8 is a congressional power, not a mandate (and thus, nothing is actually enshrined). It’s hard to deny that design patents are the US’s answer to industrial design rights elsewhere. However, since the US Constitution wouldn’t allow such a right to exist on its own, we have to use a different option, and make it fit as best as we can with the copyright and patent clause. An industrial design is not really an ‘invention’, and the people who obtain them are not really ‘inventors’ if that is all that they have done.

    As for OEM parts vs. third party replacements, I would probably agree that, on average, OEM parts are better quality, but the quality of third party parts varies depending on which third party you get them from, and there are a fair amount of very low quality parts that bring down the average. It’s similar in that regard to general mechanics vs. certified mechanics. In both cases, even if the official choice is higher quality, it’s certainly not to an extent that justifies the cost (provided you use a bit of sense in your choices). If it were the case, the market for third party parts would likely be exceptionally small, and incapable of getting favorable laws passed. This might even improve the situation a great deal as it would mean that replacement parts could be in a clearly legitimate market instead of a gray market.

    Also, since this is a design patent, the replacement parts could still be manufactured, so long as they use a different design. Theoretically, other designs not fitting would invalidate these patents since that would mean an undeniably functional element is part of the design. So, the difference would be whether or not cars with low-cost replacement parts look ugly or not. This doesn’t stop the replacement parts, it just makes them less appealing (unless they were kept off the market by SLAPP-like suits, but that is a clearly malicious practice that you can’t reasonably advocate)

    Finally, the way this legislation is worded would still protect, for example, GM, from using a design patent for a part in Ford’s new Mustang in their own vehicles. They could theoretically offer GM parts for Ford vehicles after 30 months, but I doubt that would be in their interests anyway. This is probably where the majority of the value and incentive for automotive design patents lies anyway.

  34. Blind Dogma August 9, 2012 3:43 pm

    It’s been awhile since Bobby has come around stumbling from an anti-patent bender.

    Welcome back. Free glass of Kool-Aid to get you started.

  35. Stan E. Delo August 11, 2012 1:48 am


    Although I am a third generation American, my heritage goes back to Scottish from both sides of my family, as well as a fair dram of Irish and a whole bunch of Norwegian from also both sides of the family. During the 1000 or 1200’s or so as just a guess, the Norwegians were so hungry and cold that they came to GB seeking fairer climes and other things in their remarkable sailing craft.

    I was told by my mom that I had a definite Druid connection as well, and that I probably still have a few second cousins on the Isle of Man, probably in Douglas the city or erstwhile town. It is a Welsh sort of thing if I recall it correctly, but the details are probably lost to antiquity. Hopefully a bit of the Magic still remains though. Triple expansion steam engines and all like that.

    BD- Please don’t encourage him, just so you can play with him like a cat with a foolish mouse. It might lead nowhere substantive, and it confuses the issues quite a bit. Just a suggestion, as far be it from me to tell you what to do or not. I am just thinking of damage control, so to speak.

    Some Senator or Representative might actually be following this discussion, and might be led astray by ingenuous motives or messages.

    A free glass of Chimeric Citrus to all who attend here.