Patents are a form of intangible property that provide exclusive rights to the owner to use/sell/license the patent or the patented invention. Patents are further classified as utility patents, design patents and plant patents.
Utility patents are granted for a novel invention that has some utility and function. Design patents are granted solely based on a new design without thinking about whether the design has a utility or not. Plant patents are granted to an applicant who has invented a new variety of a plant.
A design patent has a great importance in the field of patents. It protects a new and original ornamental design applied to an article. A design patent protects the visual characteristics, configuration, and surface ornamentation of an article.
A design under patent can be protected in parts or. For example – There is a Bottle A. A has a body B and a cap C. The patent applicant can, either file for a single patent application claiming for the whole bottle, or he can file separate patent application for both B and C. If we talk about the design patent definition in simple language:
Moreover, the design patent cost is comparatively less and can be obtained easily as compared to utility patents.
The crucial point that an applicant should think about before filing is whether the value of the invention lies in its functionality or its appearance. It is possible that the design of a product also has a utility. The design can lead to an increase in the efficiency of an object. But when a patent applicant applied for a design patent, the only protection he gets is for the visual design and not its utility. A separate utility patent application can be filed for the utility of the design.
For example, if the applicant thinks that for a particular product, just a new design will have an economic value, then filing a design patent would be beneficial for the applicant as getting a design patent is both cheaper and a fast process. Getting a design patent granted for a product also increases the market value of the product.
The subject matter of the design patent application relates to:
In the US, an article can be considered to have a design if the design is such that the product cannot be defined without the design. The design must be part of the product and inseparable from the product. This design must be a definite pattern. This pattern can be engraved, printed, or etched on a manufacturable product.
In European Union (EU), a design is referred to as a Community Design. A community design can be of two types, namely Registered Community Design (RCD) and Unregistered Community Design (UCD). Like a US Design patent, a Community Design also provides protection for the appearance of the whole or a part of a product design in community design. The design of the product must be due to the presence of lines, contours, one or more colours, different shapes, textures, engravings, and/or the material of the product itself and/or its ornamentation. Unlike US Design patents, a Community Design can also be filed for Blueprints, Architectural Plans, Interior Designs, Landscape Designs, etc.
A registered community design is a right granted by EUIPO to an applicant of the community design to protect his design and provides him with the exclusive rights to use, sell, produce, offer, import, export, or stock items that include the protected design. For a community design to be considered as registered, the design must be registered at an intellectual property office to take effect.
Any person who uses the design commercially without any license or prior consent from the owner of the RCD, that person is considered to be infringing the design and is liable to be punished.
An unregistered community design is a right granted by EUIPO to just restrict any other party, besides the owner, from using the design commercially. This is applicable only if the use of the design by the third party occurs from copying the unregistered design.
It will not be considered as an infringement if the design was produced independently by a secondary designer. If the secondary designer proves that he had no prior knowledge of the protected design, then it is not considered as an infringement.
A UCD gets protection from the day it is produced. It does not need any kind of formal registration. Both RCDs and UCDs enjoy the same scope and level of protection. The only factor that is required for their protection is the novelty, originality, and ornamentally.
While applying for a design patent, it must be kept in mind to draw solid lines for the part to be claimed and draw broken lines for the unclaimed part. For example- If a design is directed to just the groves on a bottle, then groves must be drawn in solid lines and the bottle must be drawn in broken lines. This is done to define the scope of protection of the design.
An applicant can apply for a design patent for physical products, like Mobile phones, bottles, shoes, drill machines, toothbrushes, etc., and virtual products like a graphical user interface (GUI), graphical icons, graphical representation of the layout of a mobile phone application.
Any Community Design, registered or unregistered, gets protection in all the member states of the EU and some non-EU members as well. All the EU member states are members of the EPO (European Patent Office).
Non-EU members that are part of EPO are: Albania, Iceland, Liechtenstein, Monaco, North Macedonia, Norway, San Marino, Serbia, Switzerland, Turkey, and the United Kingdom.
Different laws govern the protection of Designs in different states. In US, an applicant can protect his designs by getting an exclusive license under 35 U.S.C. (§§ 171 – 173). By virtue of these provisions anyone who invents any new, original, and ornamental design for an article, may obtain a design patent for a period of 14 years (if filed before May 13, 2015) and 15 years (if filed on or after May 13, 2015) from the date of grant of the application. Here, “new” means novel in the light of pre-existing arts; “original” means that the design should be unique and not obvious in light of the pre-existing art; the design should be unique and must not simulate a well-known or naturally occurring object or person is not original.
In the EU, an applicant can get his design protected by obtaining an exclusive license under Regulation (EC) No 6/2002 on protecting Community designs (CDR).
Distinctiveness & Unique shape are the other requirements that are required for a design. The requirement of distinctiveness corresponds to novelty criteria according to article 4(1) Council Regulation (EC) No 6/2002.
Design patents are only based on the design. There is no requirement to get a design patent registered based on its utility. The most important requirement for getting a design patent registered is a unique design. To show this unique design, an applicant must prepare proper design patent drawings as these drawings are the most essential element of the design patent application. Each design patent application must contain drawings of a product presenting the unique design. These drawings are mostly a drawn representation of the product along with its design. Some of the patent offices allow to provide black and white photographs of the product and some of the patent offices allow to provide a coloured representation of the product.
An applicant of a US Design patent is supposed to provide designs that are in black ink on a white paper. USPTO also allows an applicant to provide coloured drawings or photographs in Design Patent applications, pertaining to the condition of pre-approval from USPTO by filing a petition. The applicant must explain the reason for him to provide coloured drawings/photographs. If satisfied, USPTO can allow a patent applicant to use coloured drawings/photographs. Any such petition must be filed along with the appropriate fee.
While submitting a coloured drawings/photograph, a disclaimer must be added by the applicant if he considers the colour not a part of the design he is claiming. In the absence of any kind of a disclaimer, the patent application would be considered to have colour of the design as an integral part of the design. A disclaimer may only be used when filing colour photographs as informal drawings.
Unlike in US, EUIPO accepts coloured drawings or photographs in the applications for Community Designs without any requirement of a pre-approval by way of petition and without any kind of fees for the coloured drawing or photograph. An applicant does not need to file any informal submission of the drawings in an application for Community Design.
In a Community Design application, if a coloured drawing or photograph is provided, the colour is an integral and important part of the design. EUIPO provides protection to the design considering colour as an integral part. Unlike the US, providing a disclaimer for exclusion of colour from the scope of design is not given any consideration by EUIPO. If an applicant does not consider colour as an important part of his design, he should provide drawings in black lines or white paper.
Reasons to raise objection by the examiner for drawings:
For the examiner to understand the scope of the design, an applicant needs to provide enough images to completely disclose the claimed design.
USPTO considers any ornamental design, visual features including shape or configuration of item or product, graphical user interface, computer icons, fonts to be a subject for protection as design if they are novel and original. There are some subject matters that are considered ineligible for protection. These include:
In the US, a subject design is considered as a novel design if one single pre-existing/prior art does not disclose a design identical to the subject design in every material respect. In the design patent infringement test as taught by The Federal Circuit of US, The Federal Circuit of US compared “identical in all material respects” to “substantially the same.” Thus, the same design can also be prior art for a subject design.
In Europe, designs are protected by the European Union Intellectual Property Office (EUIPO), previously referred as OHIM’s Community Design system. An applicant can for both registered community designs and unregistered community designs.
Every state has a different format to categorize a design patent. For example, the design patent number starts with “D” or “Des” in US. Every US Design patent has a 7-figure identification. For example – (Dnnnnnn, where “n” is a numeral from 0-9).
A Registered Community Design has a 9-figure identification having the configuration nnnnnnnnn-mmmm, where “n” and “m” are numerals from 0-9. “n” indicates the main design number and “m” indicates the number of granted design. To define it clearly, if a community design application has been filed having only one design and the design gets registered, then the granted number would be nnnnnnnnn-0001. And, if a community design application has been filed having multiple designs and the multiple design gets registered under that same application, then the granted number would be nnnnnnnnn-0001, nnnnnnnnn-0002, nnnnnnnnn-0003,…… and so on.
The design patent length can be a deciding factor for an applicant while filing for a patent. An applicant’s invention may have both utility features as well as design features. A utility feature may not be usable after a few years. So, an applicant may be motivated to get a Design patent. So, determining the design patent term, and utility patent life term is necessary.
In US, the design patents that were have a life of 14 years from their issuing date (filed before December 15, 2013) and have a life of 15 years from their issuing date (if filed on or after December 15, 2013). Just like a utility patent, upon the expiry or the life term of design patent, the design enters in public domain, and anyone can use it without the risk of infringement. Expiry of the life term of a design patent leads the applicant to lose all his exclusive rights over the design.
In Europe, the community design, either a design can be register with the EUIPO before commercialization and obtain a registered Community design (RCD) or, using it for commercialization without registration and use it as the unregistered Community design (UCD).
Although both RCDs and UCDs have similar kinds of protection provided by the EUIPO, the term of protection of both are quite different. An applicant must carefully decide his strategy based on the life term of the design before commercializing the community design.
14 years from their issuing date (filed before December 15, 2013) 15 years from their issuing date (filed on or after December 15, 2013)
Registered Community Design (RCD)
Initially for a period of 5 years and can be renewed upon request for periods of 5 years upto a maximum of 25 years
Unregistered Community Design (UCD)
For a period of 3 years from the date when first made available to public in the jurisdiction of EU. (Not eligible for renewal)
A design created by a designer may seem new and original to him. But it is possible that the same design is already being used or has been registered by someone else. So, in order to save time and money, a designer should try to make sure that the design seems patentable or not. It is possible that during the search it may be discovered that his modern design unintentionally infringes upon an existing design patent. Either this can be done by the designer himself or he can hire someone for doing this search for the patentability. The search should not be restricted to just EU authority. It should be done considering the entire world as anything published anywhere in the world before the filing of the existing application can be an obstacle for getting your design registered.
It is a quite common query that how to check design patent? So, it can be done by using different databases such as:
eSearch Plus is a searching tool provided by EUIPO. It provides access to EUIPO’s database of registered Community designs. A user can search for registered designs based on keywords, classification, inventors, applicants, etc. and can help you find out if someone has registered a similar design with us.
Design View is another searching tool provided by EUIPO. It’s a dedicated tool where design searching can be done using various search fields like classification, keywords, inventors, applicants, date restriction etc. It allows to check designs of several other nations other than EUIPO’s database.
WIPO Global Design Database is a searching tool provided by WIPO. It is a design searching tool provided by WIPO where a user can search for designs using various search fields like classification, keywords, inventors, applicants, date restriction etc. It allows to check designs for several jurisdictions like US, JP, CN, EU, KR, etc.
For conducting a search for Unregistered Community Designs, there is no official portal to search for any design as it has not been registered. A designer/searcher has to conduct a search within the domain of the subject matter of the patent. The design can be searched in any existing literature, researched on the internet, checking social media platforms for various companies, visiting trade fairs, etc.
Designers can approach professional agencies/consultants to do a thorough search for the same as they will have an experience doing so.
In a design patent, there are only 2 main factors – Design and date of priority. These two factors must be kept in mind while doing a search. Conducting a design search based on these factors reduces the risk of infringing someone’s design and help decide the applicant how to approach towards registration of a design. Although, an RCD gets protection from date of grant of the design patent, but if there is a priority date prior to the filing date of the design patent, then that date becomes the cut-off date for that design. Otherwise, the date of filing is considered as priority date itself.
Just like a utility patent, a design also enjoys the right of priority date. Any design application filed in any country that is party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organization Anyone may claim priority by using their design application in that country as a basis for an RCD application.
Unlike utility patents where an applicant gets a period of 12 months from date of filing of a priority application to file an application in EU, an RCD application with an earlier design application has to be filed within 6 months. If the design claiming priority gets registered in EU, then it will have priority over other applications filed during that six-month period.
An applicant is given the option to claim priority when completing the RCD application form. The filing date of the first application becomes the benchmark date for checking the first application date.
For example –
Now, even though Michael filed for the community design application later than John did, Michael can file for invalidating John’s Design if B is substantially like A.
During the search, it is possible to find one or more results that are quite similar to the subject design of a designer. In such situation, there are some options that can be used by the designer. Some of these options are:
The designer can contact the owner of the registered design to negotiate and come to an agreement of selling/licensing him the right to use that registered design. Any different kind of agreement can also be reached between them.
A designer can make substantial changes in his design in order to make the design different from the registered design(s).
The applicant can ignore those designs and proceed with the filing of his application and risk an invalidity action. He may face objection on the grounds that his design is similar to any existing RCD or UCD. Depending upon the situation, the applicant will have to take some steps to curb the objection or eventually withdraw/abandon his application.
Upon finding an RCD similar to his design, he may sue the applicant of that RCD if he thinks that there are suitable ground(s) for the suit.
If the subject design is substantially similar to an existing RCD and does not pose any major difference, then the applicant can give up on filing an application.
There are various parts of a design application that should be properly done. These parts are:
Not just the examiner, it also allows the public to understand the nature and scope of the design. Thus, an application should be provided with a specific and descriptive title.
Just like a US Design Patent Application, an application for a Community Design must be filled with certain necessary requirements. These steps are to be done in order to obtain a filing date. These steps are:
The request for registration should be pre-printed on the form for filing for the community design. The applicant can be any natural person or a legal person or any equivalent institution in accordance with national or international law, e.g., a public authority (Ministry of Industry). Any applicant who does not have a place for doing business in the EU must be represented by a professional representative having place of business in EU. If this condition is not satisfied, the application will be refused.
An applicant must pay fees for getting the examination done by the examiner for the design application. Filing fees is not required to get a filing date. Upon examination, if the examiner reaches the conclusion that the design should be registered, then the design must be registered as a Registered Community Design, and it must be classified according to the Locarno Classification.
In case an applicant wants to register multiple designs along with the main design, he can file for a request for the registration of more than one design within the same application.
During examination, the examiner deals with each of the multiple designs contained in the multiple application or registration separately. Each of the multiple designs enjoy the same protection as the main design and each of them can be enforced separately by the applicant. Each of them can be separately licensed, be the subject of a right in rem, a levy of execution or insolvency proceedings, be surrendered, renewed, or assigned, be declared invalid or subject of deferred publication.
Filing a multiple application provides an applicant with bulk discount. In case of multiple application, appropriate fees should be paid according to the rules of EUIPO. All the design filed in the multiple application must be applied to the same class of product and is classified in only one of the 32 Locarno classes. It refers to “Unity of Class Requirement”. The designs may belong to different subclass of the main Locarno Class.
“How do I get a design patent OR how to obtain a design patent?”, this can be question revolving around the mind of an applicant who has to file a design patent application for the first time. Just like a utility patent, there is a procedure for a design patent to be filed or granted there. Different jurisdictions have different procedures, timelines, fees, and rules for this. Below are the details of these procedures that one should follow to get a design patent in US & Europe:
While filing an application for a US design patent, an applicant must follow the procedure defined by USPTO and must take into consideration all the design patent requirements such as the eligible subject matter, format & elements of application for design patent, necessary details etc.
A US design patent’s grant process involves three main stages:
Patent Laws That Apply to Design Patent Applications:
US Design Patent Application example D552513)
Getting a Community Design application registered in EU is a very fast process. The examiner while reviewing the application for a design patent does not examine the application for checking the patentability of the design. The only need that is needed to be fulfilled in an EU application for the Community Application is the proper fulfilment of formalities required for the grant of an application.
The task of determining the scope of the design is left to the European courts in case an infringement suit is filed. The designs that are protected along with trademarks can be protected by means of European design patents.
An example of Registered Community Design Patent (001865569-0003)
There are three elements to make sure that a subject design claimed meets the criteria of the EUIPO:
A design can only be registered if that design is applied to a particular product. Any design not applied to a product can’t be registered. For example – Mere showing zig-zag pattern on a white sheet is not allowed to be registered. But the same zig-zag pattern if applied to a bottle may be registered. No protection is provided till a design is applied to a product. If the product has an ability to be disassembled and reassembled, then those parts of the are also considered as a product and any design applied on them can be registered.
The design should not be against public policy, and certain standards. Any deign that may portray or promote violence or discrimination based on sex, racial or ethnic origin, religion or belief, disability, age, or sexual orientation is not allowed to be registered by EUIPO.
A design is allowed to be registered only if its novel and has individual character. A design is considered to be new if no identical design has been disclosed before it. If two designs have substantial similarities and they differ only in insignificant details, they will still be viewed as identical. Hence, the design to be protected should be different from prior designs, which defines the individual character of the design.
The purpose of representing is to display all the features of the design that an applicant is trying to protect. An applicant must ensure that the features of your design are displayed as thoroughly as possible in order to get the maximum protection he can for the design. Any detail missed out in the design that was not properly represented by the applicant will be considered as a fault from his side.
Therefore, it is important that an applicant provides an accurate and proper representation of the design carefully and thoroughly. The representation quality is the foremost factor for the protection of design.
In practical terms, the quality of the representation must allow the design to be reduced or enlarged to a size no greater than 8 cm by 16 cm to be published in Community Designs Bulletin and to enter in the Community Designs register.
An applicant is allowed to file a maximum of up to ten different views to represent your design: seven protected views and three non-protected views. Different views such as plain, in elevation, cross-sectional, in perspective or exploded views can be provided for the same.
The applicant must maintain uniformity while preparing the representations. If the applicant is providing black and white representations, then all the representations must be black and white. And, if the applicant is coloured representations, then all the representations must be coloured. EUIPO does allow to mix colour types, e.g., to file 2 views in black and white and 2 in colour for the same design.
While preparing the representation for your design, it must be made sure that the representation has a neutral background and does not contain anything other than the subject design. The design should be clearly distinguishable from its background.
There are certain identifiers that should be used to represent different aspects of the design. some of these identifiers are:
These indicators are self-explanatory. No explanatory text, indications, wordings, or additional symbols may be used in the design views.
National or Europe-wide protection?
Just like utility patents, design patents are also enforceable in the states in which application has been applied for. Depending upon the commercialization strategy of a person, he must decide whether to file for one or more particular states or file for protection in whole of EU member states.
The decision can be based on the business area of the applicant. If the business area is a single state, then it makes sense to just file for one state. But if business is being conducted in more states or planning is to expand the business, then decision for filing is to be made accordingly. In case of application for only a single state, the exclusive right will be for just that state only. The applicant won’t be able to prevent anyone from copying it in other EU countries.
There are two routes to get a Community Design registered. An applicant can proceed directly to EUIPO or else, he can approach the International Bureau of the World Intellectual Property Organization (WIPO) in which case you must designate the European Union.
Even if the application is entered through WIPO, the application gets examined by EUIPO.
During the examination, an examiner goes through the application to perform formalities check. If during the examination, an issue is detected by the examiner, the examiner has to communicate the issue to the applicant or his representative. A period of two months is provided for an applicant/representative of the applicant to respond to the examiner’s objection. This period can be extended upon request according to the procedure of EUIPO.
Generally, EUIPO automatically approves the first request for extension. In case of a consecutive extension, a proper reason and justification is to be provided. Upon satisfaction of the examiner, the request may be granted.
If the issue raised by the examiner is not solved according to the satisfaction of the examiner, then the examiner has the right to refuse the registration of the subject design application either in its entirety or, in the case of a multiple application, for some of the designs. In case the applicant does not agree with the decision of the examiner, he has the right to appeal in court.
Getting a patent registered can be a costly process. An applicant must be aware that how much a design patent costs. The cost can be an important factor to reach the decision of whether to file a patent or not; and which type of patent to be filed. To answer the issue of how much are design patents, it can be described in the way that every state has different costs for different stages, starting from the filing of the patent until the grant of the patent.
In the US, an applicant is required to pay the design patent application fee, examination fees & search fee along with the application for a design patent. For small entities, all these fees are reduced by half. And for Micro Entities, all the fees are one-fourth the regular fees.
An applicant can obtain the exact fees for different stages from the official website of USPTO. Click on the link to check the fee structure – Patent Fees
Maintenance fees in utility patents can be seen quite commonly but, do design patents have maintenance fees? To answer this, after the grant of a design patent, no maintenance fees are required to maintain the patent. It remains in force till its expiry. Also, the doubt of how long a design patent is good for can be cleared from the fact that no maintenance is required in case of design patents as discussed above.
Getting a community design registered in cheaper than getting a Design patent registered in US. Even the time period for getting a grant in less as compared to US. This is done to allow an applicant to start using the design for commercialization quickly.
For a registered Community design (RCD) application, there are three types of fees, viz. registration, publication, and deferment fees.
An applicant can obtain the exact fees for different stages from the official website of EUIPO. Click on the link to check the fee structure – Design Fee
To better protect your design in Europe and increase the scope of protection that you need, an applicant can file multiple design patent applications, each covering a different scope of a design. Fee structure is very cost-effective in Europe and fees for additional designs is less.
The fees payable depend on two factors:
The design fee structure can be explained as:
The exact fee can be calculated based on the number of designs and any kind of deferment, if needed. The notable differences between European registered community design & US design patents can be seen below:
Just like a utility patent, any third party who is using, manufacturing, selling & importing a product having similar design as protected by the design patent, that third party is infringing the rights of the owner of the design patent. The owner can file a suit against the person infringing the design patent and it is the duty of the court to decide on the matter. If proven guilty, that person is liable to pay cost for damages to the owner of the design patent.
Apple vs Samsung is one of the most famous cases. In US, Apple filed a suit against Samsung claiming that Samsung is infringing its Design Patent No. USD593087S1. In this case, Apple has claimed a design for its iPhone having some solid lines and some broken lines. Samsung’s product was clearly similar to the claimed part of Apple’s Design. There were certain dissimilar features in the rear section of Samsung’s product. The rear section of the phone was not claimed by Apple in its Design Patent No. USD593087S1. Upon proper hearing, the jury voted in favor of Apple and Samsung was asked to pay damages to Apple.
Although it is easier and a less costly process to get a design patent granted as compared to a utility patent granted. But is a myth that any application will be granted easily in all the cases. With the increase in the number of granted patents, it has become difficult to get a patent granted. The office actions are also quite regular during the course of grant of a design application. This can not only be costly, but also a time-consuming task.
Unlike utility patents, the prosecution history, and the design patent itself only get published if the design gets granted. Otherwise, there is no publication of the same. Rejected applications and the abandoned applications remain unknown to the public. It is not possible for public and any interested applicant to know what kind of rejection was implemented by the Patent office and how was law implemented by the patent office.
This leads to the increase in the rejection of the future applications. For Utility patents, prosecution history can be read to analyze and prepare the future patent applications accordingly. But due to this, it is not possible for an applicant/representative to understand what to avoid in future filings and what kind of arguments to be avoided. The access to rejected or abandoned applications is only with institutional applicants having large portfolios, which helps them to get the understanding about different arguments.
Any data related to abandonment rates or rejections for design patent applications is not released by the USPTO. The only data available is that around 15-20% of design patent applications get rejected by USPTO (information based on Freedom of Information Act).
But despite the challenges in continued prosecution application design patent, the allowance rate of design applications. This still makes them a more likely to be granted than for utility applications. It will still cost lesser money to get a grant for a design and in turn, increase the overall intellectual property portfolio.
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