[NJ] How much design freedom exists to create a product without infringing a design patent in a standardized market?

Lexi, Chatbot

I understand that navigating design patent enforcement can be quite complex and concerning. Have you already developed any specific designs for your credit card skins that you are considering bringing to market?

Lexi, Chatbot

Are you currently in communication with any legal professionals regarding this matter, or is this your first step in seeking legal advice?

Lexi, Chatbot

Is there anything else the Lawyer should know before I connect you? Rest assured they'll be able to help with your design patent concerns.

Jon

Hello, and thank you for reaching out! I'm Jon, a licensed attorney with over 13 years of experience, here to help. I understand legal matters can feel overwhelming, but you're in good hands. My goal is to explain things clearly and guide you toward the best possible solution for your situation. Just a quick note: our conversation is for general legal information only and does not create an attorney-client relationship.

Jon

Which state are you located in or planning to operate your business from?

Jon

Thanks for sharing your location and business details. That helps a lot. Could you tell me if you have any specific designs in mind that you think might be close to the existing patents? Or are you still in the brainstorming phase?

Jon

I understand this is a complex situation. Have you considered any potential design elements that might differentiate your product from existing ones? This could help in assessing the risk of infringement.

Jon

It is clear you are approaching this with a lot of care, which is exactly what you need in a market where one company holds a dense cluster of design patents on what is essentially a standardized product.

In design patent law, features that exist purely because of function are not protected under 35 U.S.C. Section 171, which limits design patent protection to ornamental rather than functional aspects of a product. Credit cards must follow ISO 7810 and ISO 7813 standards for size, thickness, and corner radius, and EMV rules for chip placement. Those are functional requirements. Because so many similar designs already exist in this space, patents in this "crowded field" tend to have a narrow scope. Whether one design infringes another is judged by the "ordinary observer test" established in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) — if a normal person thinks two designs look substantially the same, it could be infringement. But small changes, like adjusting cutouts, corner radii, or margins of an adhesive cover, can often be enough to avoid infringement.

Regarding the specific patent currently under ex parte reexamination, this signals that its validity is being formally questioned. The patent is still presumed valid until the USPTO either cancels or amends the claims, but courts and platforms often hesitate to act on patents undergoing reexamination, especially if there is clear evidence of prior art. The reexamination was likely triggered because the USPTO found something new that the original examiner did not consider, which could narrow the patent's claims or even invalidate it completely.

You or an LLC can file a reexamination request without a lawyer, but it is highly recommended to get professional help because the threshold for showing a "substantial new question of patentability" under 35 U.S.C. Section 302 is technical. Fees for a streamlined ex parte reexamination are around $6,000 to $8,000 for a small entity, and attorney fees can range from $10,000 to $25,000 or more. Historically, many reexaminations end with claims being cancelled or significantly narrowed.

If a platform like Etsy or Amazon issues a takedown notice, there are specific dispute procedures. For patents, these platforms usually have internal reviews rather than simple counter-notices like you see with copyright. Claims of patent overreach rarely count as antitrust violations under 15 U.S.C. Section 2 unless the patent was obtained by fraud or the litigation is clearly a sham meant solely to block a competitor under the standard established in Walker Process Equipment, Inc. v. Food Machinery Corp., 382 U.S. 172 (1965).

When you consult a licensed patent attorney, focus on three main areas: a Freedom-to-Operate analysis to see if you can safely make designs that involve the cutouts in question, design-around strategies that tweak dimensions or add decorative elements to avoid the ordinary observer test, and options for handling takedowns while a reexamination is ongoing.

Jon

Since credit cards are governed by rigid ISO standards, much of the geometry is legally considered functional rather than ornamental. In design patent law, features dictated by a product's use cannot be protected. This creates a crowded field where the patent holder's legal reach is typically very narrow. To avoid infringement, focus your design efforts on the specific ornamental choices that are not required for the card to work, such as the exact shape or stylization of the cutouts and the surface texture. Even if your product shares a similar layout due to necessity, small visual variations in these non-functional areas can be enough to distinguish your design. However, the primary risk in this market is not just the final legal verdict but the disruption caused by platform takedown systems that often favor patent holders regardless of these technical nuances. The ongoing reexamination further suggests that broad claims are being actively challenged for overreaching into functional requirements.

Jon

Did that help clear things up for you? If you have any other questions or need more help, please do not hesitate to ask.

Jon

Legal precedent strongly supports the argument that a design is invalid if its appearance is dictated by its function. Because ISO and EMV standards leave almost no choice regarding a skin's dimensions or chip placement, those features are utilitarian requirements rather than protectable ornamental expressions. If a design is so constrained by technical standards that no meaningful alternatives exist, the patent is highly vulnerable to being declared invalid or overly broad. The ongoing reexamination confirms this instability, as it signifies that the Patent Office found a substantial new question regarding the patent's validity, likely based on prior art that was originally overlooked. If you can locate evidence of similar skins or cutout designs that predated the company's filings, you significantly undermine their legal position. While individuals can anonymously initiate reexaminations to clear a market path, it is a high-cost strategy usually reserved for those facing direct threats. Ultimately, the law protects the ornamental surplus beyond what is necessary for the product to work. In a standardized market, this means the scope of a valid patent is usually so narrow that even minor aesthetic variations in non-functional areas can prevent infringement.

Jon

You're so welcome! Do not hesitate to reach out if you need anything at all!