First published in Law360
Even sophisticated companies familiar with intellectual property rights sometimes overlook the added value that can be gained from obtaining design patents.
Recent data provided by the World Intellectual Property Organization in “Global Intellectual Property Indicators 2021”shows that companies are increasingly protecting their designs. According to the report, worldwide design filings increased 5.6% between 2019 and 2020, and the number of filings has increased year on year almost every year since 2006.
In addition, the impressive number of design applications filed in China in 2020 – 770,362 – represents well over half of the applications filed globally, and that number could rise further given recent changes to China’s regulations regarding interface designs.
The United States, by comparison, ranks fourth in filings – behind China, the EU and Korea, and just ahead of Turkey – with around 50,000 applications in 2020. WIPO data shows that while deposits in the United States have also increased to some extent, there is still room to grow.
This article will discuss the important role that design patents can play in protecting an investment in a company’s products, as well as some of the most important differences between obtaining design patent protection in states. -United and abroad.
Benefits of design patent protection
Design patents protect the ornamental design of a functional product and, if used correctly, can play an important role in protecting against competitive products that seek to mimic the appearance of an established product. This type of protection can come into play in a number of different circumstances.
First, design patents can be used to broadly protect what is known as a company’s design DNA. For example, a company that chooses to market a line of products in bottles with a distinctive shape can proactively protect the distinctive shape of the bottle by carefully obtaining design patent protection.
This will immediately allow the company to differentiate itself from the competition and create a cohesive product line. Other types of protection, such as trade dress rights, could eventually follow, but design patents may offer some protection in the meantime.
Second, design patents can be useful in protecting substitutes or products for which a significant source of revenue will be derived from the purchase of disposable or consumable components. For example, design patents were used to protect disposable coffee pods, preventing a competitor from selling competing products and protecting this source of income for the company that developed the innovative design.
Some jurisdictions have so-called ‘must fit’ rules that may limit design patent protection in these circumstances – in order to prevent a monopoly and to allow competitors to compete in the market – but many places, including the States – United, have no such limitations.
Third, design patents can play an important role in preventing counterfeiters and those who sell copy products. For example, a shoe manufacturer may protect certain elements of a shoe design, and this protection will apply to counterfeit footwear, regardless of whether their company or product logo is incorporated into the counterfeit product as well.
This is because a new form of counterfeiting has arisen in which simple counterfeit products are made and shipped to the United States without any logos or other markings, and the logo is shipped separately and added to the counterfeit product later. In such circumstances, trademark protection is not particularly useful as there are no obvious trademark issues when the products reach customs and border control, the problem of counterfeiting arises later.
A bipartisan bill that had previously been introduced in Congress sought to close this loophole by allowing customs officials to enforce design patent rights at the border. Customs officers are well equipped to perform this task, and this could help curb the sale of counterfeit goods. Other countries have put in place similar protections. Some industry groups and intellectual property organizations have submitted letters in support of this type of legislation and called on members of Congress to pursue it.
Finally, one area that has seen strong growth in design patents is the protection of graphical user interfaces, which allow a user to interact with a computer system. It can be as simple as protecting an icon that changes color, or it can involve protecting detailed display dashboards. When customers use a product, they can become familiar with the interface, and especially if the interface is memorable or unique, protecting it could help set your product apart from the competition.
This is because it may be possible to obtain some protection for software elements that otherwise could not be protected by utility patents. A design patent covering the iPhone home screen played a significant role in the Apple Inc. lawsuit against Samsung Electronics Co. Ltd. in U.S. District Court for the Northern District of California in 2013, showing the importance of considering this type of intellectual property. in various technological fields.
Five Considerations for Obtaining Design Patents in the United States and Abroad
US design patents are obtained from the US Patent and Trademark Office in a process similar in some respects to the process used to obtain utility patents: an application is filed, the application is examined by an examiner and, if the design is new and not obvious from the prior art, a design patent is granted.
But design patent systems and requirements vary from country to country. Some countries do not have examination requirements and instead use something more akin to a registration system, in which the validity of the design patent is dealt with later.
Other countries take a hybrid approach whereby the right is registered first, but must be reviewed before the design patent can be applied. And some countries offer limited protection to unregistered designs, similar to copyright.
Here are some key differences and considerations to take into account when applying for design patent protection.
1. The scope of protection varies by jurisdiction.
Most countries have different laws regarding design patents and will offer patent holders different scopes of protection. For example, the United States does not allow patents covering logos, unrelated to an underlying article, or holographic projections, while these may be protected in other countries.
Some jurisdictions allow a claimant to claim only part of an item, while others require that the entire item be claimed. Differences in what is protectable may require a change in approach by jurisdiction.
2. Different countries have different design unit requirements.
Jurisdictions differ on the number of designs that can be included in a single patent. Some countries have strict requirements limiting design patents to a single design, while others are broad and allow related rights. In the United States, multiple designs can be covered by a single patent if the designs are patentable without distinction.
3. Different countries have different functionality requirements.
Design patents are intended to protect designs that have an underlying function, but design rights may be excluded when design is dictated only by function. Functionality testing varies from jurisdiction to jurisdiction.
The degree of functionality is a key consideration. Is design dictated only by function? Is form essential to perform a function? Or are there alternative designs showing that there is more than one ornamental design that will perform this function? Depending on the standard, the permitted protection may differ. Korea, for example, allows protection of a functional design if there is another shape available.
4. In the United States, the claim must correspond to the title of the design patent.
In the United States, the design patent claim must match the design patent title. Therefore, it is important to be careful when converting design patent applications from other jurisdictions.
In the 2019 Curver Luxembourg SARL v. Home Expressions Inc. from the United States Court of Appeals for the Federal Circuit, a design patent claimed a specific ground.When the application was filed in the United States, the title was revised to specify âPattern for a Chairâ. A motion to dismiss was granted in a case to claim infringement by a basket using the pattern indicated in the patent because the claim was limited to chairs. Thus, the limitations in the title had the effect of limiting the scope of protection.
5. Drawing requirements vary from jurisdiction to jurisdiction.
Different jurisdictions have different conventions and requirements for submitted designs. Some countries require more views than others. The admissibility and meaning of using certain techniques, such as shading, also differ. Thus, before importing the same drawings from another application, it is important to ensure that the drawings meet the requirements.
Submission of non-conforming designs can lead to written description problems and result in patent claims that do not cover the product you are seeking to protect.
In addition, in the United States, in some cases the designs included in the patents granted by the USPTO are of poor quality, making the scope of the claims unclear. However, it is the original drawings submitted to the USPTO, rather than the drawings that appear in the granted patent, that prevail, in case of ambiguity.
Companies should not overlook the potential benefits of seeking design patent protection for their products. Although in many cases utility patent applications are filed first, it is important not to delay filing design patent applications once the design elements of the product begin to be finalized. Working proactively and in collaboration with lawyers will ensure that the right protection is obtained and that design patent rights are strong and offer protection in all the most important jurisdictions.