Design patents: be very afraid

I've long been loath to allow my technology development, user interface, graphic arts, and industrial design clients to agree to be responsible for infringements of patents caused by my clients' deliverables, especially US design patents (or the EU-equivalent, design rights/design registrations). The reason: strict liability and the "ordinary observer" test – frightening concepts for artists or engineers that design or develop per the customer's requirements. There is, however, an even more worrisome aspect of design patents: the monetary remedy of total profits attributable to the infringing product or device, regardless of the extent to which the product's value is attributable to the infringing design.

For this and other reasons, I like to use "registered rights" provisions in order to ensure that my developer and designer clients are not held responsible for infringements of strict liability IP rights, like design patents. The first sample clause below shows the typical pro-buyer development or design agreement's non-infringement warranty. The second version is my proposed redline of that clause to incorporate these registered rights exceptions to the warranty.

(excerpted from  |  lawyers with mojo

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