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Meeting of the Minds: Around the World and Back: Making a Champion Out of Your Design with International Design Rights

By Kenneth “Kenny” Matuszewski and Elizabeth Ferrill

Published in Landslide Vol. 11 No. 3, ©2019 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Making a Connection between Young IP Attorneys and Those Who Want to Share Their Experience

Meeting of the Minds is a recurring feature of Landslide® magazine. It includes articles authored by young lawyers in conjunction with experienced attorneys, who participate as mentors in the planning and writing process. Landslide is proud to provide the opportunity for young lawyers and law students to learn from attorneys in IP practice areas and to get published in our prominent legal magazine. The end product is a collaboration for which both authors share attribution.

Design is so simple. That’s why it’s so complicated.

—Paul Rand

The rights encompassing designs are as numerous as the number of designs in the world. As Paul Rand eloquently stated above, obtaining a design right may seem straightforward at first glance; however, depending on your client’s goals, the process can be complicated. One must consider both whether the right should be obtained and where the design should be protected. This article will discuss these considerations and analyze the major regimes for protecting designs.

Should Design Rights Be Obtained?

The first consideration is whether a design patent should be obtained for a particular design. Generally, if the design is unique or has unique aspects, then the owner of the design should seek protection for it to prevent copying by others or close mimicry.1 Further, design rights will only protect the way an object looks, not how it functions.2 As a result, while design patents themselves may be limited in protection, they are a valuable piece of a comprehensive intellectual property portfolio.

In many cases, design patents will issue or receive a final office action in 19 months.3 In contrast, it takes around 24 months for a utility patent to issue or receive a final office action.4 While the length of time for utility and design patents to issue or receive a final office action differs, applicants may apply for both types when their inventions contain both visual and functional features. For example, Columbia Sportswear obtained the following patents for its Omni-Heat products: U.S. Patent No. 8,453,270 (the ’270 patent); U.S. Patent No. 8,424,119 (the ’119 patent); and U.S. Design Patent No. D657,903 (the ’903 design patent). Specifically, the utility patents claimed a heat management material coupled to a base material in order to direct and maintain body heat. The design patent, however, protected the wavy fabric pattern found in different articles, such as the lining of the jacket.

Obtaining utility and design patents related to the Omni-Heat products paid off for Columbia in at least three ways when it filed a patent infringement suit in January 2015 against Seirus Innovative Techniques.5 First, on summary judgment, the court found the patented design and the accused products were strikingly similar. As a result, the court held that Seirus infringed the ’903 design patent.6

Second, after trial, the jury found that the ’270 patent was invalid because it was anticipated by the prior art and obvious.7 And the ’119 patent was dropped from the suit the evening before the trial began.8 However, the court upheld the validity of the ’903 design patent.9

Third, the jury awarded Columbia over $3.4 million in damages ($3,018,174 for the total profit from Seirus’s sales of the infringing product and $435,175 as a reasonable royalty).10 As the Columbia case illustrates, compared to utility patents, there is a greater chance of recovering more money damages with a design patent, because the owner may recover for total profits on sales of a product incorporating the infringed design.11 The infringer’s total profits are based on the specific article of manufacture embodying the claimed design, so the calculations may involve the complete infringing product or only a component of it.12 In comparison, an owner of a utility patent can only recover damages in the form of a reasonable royalty or lost profits.13

Design patents can also be used to market goods and deter competitors.14 For example, once a design patent application has been filed, the applicant can mark a product that employs the design with “patent pending.” The “patent pending” label tells consumers and retail buyers that the product’s design is unique and not offered by any competitors.15 It also signifies that the owners of the pending design patent application are not only innovative, but also serious about protecting and investing in their design.16 Filing a design patent may also cause competitors to doubt their marketing and product development strategies. Because design patents are only published and made available to the public upon issuance,17 competitors will not know what elements of the design will be protected until issuance. As a result, competitors are forced to weigh the potential profits of developing a competing product against the costs of wasted product development and the potential for litigation if the competitor’s new product is preempted by an issued design patent.18 Therefore, in some circumstances, it has been suggested that the “patent pending” label may be more effective in the applicant’s business than the issued patent.19

Where Design Rights Protection Should Be Obtained

The Hague Agreement

Through the Hague Agreement, design owners are able to obtain protection of their designs in several countries.20 The Hague Agreement is “a system for the international registration of industrial designs” and is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.21 Under the Hague Agreement, an owner of a design may choose to have it protected in the territories of all countries party to the Hague Agreement (contracting parties) by filing one application, in one language, and with one set of currency.22 There are currently 70 parties to the Hague Agreement.23 Significantly, the United States became a party to the Hague Agreement in 2015, and the United Kingdom joined on June 13, 2018.24 Other prominent contracting parties include the European Union (EU), Russia, Canada, South Korea, and Japan.25

To file an international design application (IDA) under the Hague Agreement, the applicant must have a domicile in the territory of a contracting party (or meet one of the other categories for entitlement).26 The application must include: the applicant’s name, figures, an indication of the product with a Locarno classification,27 and the number of designs and embodiments.28 In addition, applicants must ensure their IDA meets the specific requirements for each country in which they are seeking design protection. For example, the United States requires an oath or declaration from the inventor(s).

Analysis of Design Protection Regimes

Most countries have a mechanism in place to protect designs and utility patents under their national laws. However, the systems to protect both utility patents and designs vary by the depth of review, the time period to receive protection, and the scope of protection. This section analyzes three regimes to specifically obtain design rights: examination, registration, and hybrid systems. Individual country rules are also discussed to illustrate each system.

Examination System

Under an examination system, design applications are first reviewed to determine whether they comply with procedural requirements and then substantively reviewed to determine whether the design is novel, original, and clearly disclosed in the figures.29 It takes longer for a design patent to issue under an examination system30 compared to a registration system.31

In the United States, a design patent protects a new, original, and ornamental design for an article of manufacture32 and can protect either the entire article of manufacture or a component of that article.33 Significantly, the rules applicable for utility patents apply to design patents as well, unless otherwise specified.34 Once the application is filed, on average, it will receive a first office action 13 months into the examination process35 and receive a final office action or issue as a patent in 19 months.36 Because the United States recently entered into the Hague Agreement, the term length of a design patent has been extended. If the design patent application was filed on or after May 13, 2015, then the design patent will last for 15 years after issuance.37 If the application was filed before May 13, 2015, then the issued design patent will have a 14-year term.38 Once issued, a design patent requires no maintenance fee or annuity.39

Japan is another country where design applications undergo substantive examination. Under the Japanese Design Act, a design is “the shape, patterns or colors, or any combination thereof, of an article . . . which creates an aesthetic impression through the eye.”40 By limiting where the aesthetic impression can be created, the Japanese Design Act narrows the definition of a design in comparison to the United States. In the United States, to be patentable, a design must be a new, original, and ornamental article of manufacture.41 The United States design patent statute does not say how the design must be perceived, while Japan specifies that the impression must be created through the eye. For instance, under traditional Japanese design law, integrated circuit chip designs and other small designs cannot be protected, because they can only be viewed through a microscope and do not create an aesthetic impression.42 This quirk in the design system caused Japan to pass the Act on the Circuit Layout of a Semiconductor Integrated Circuits.43 The Japanese Design Act also prevents designs injuring public order or morality.44

On June 9, 2018, Japan enacted legislation extending the grace period45 for public disclosure of designs from six months to one year.46 Once a Japanese design is registered it will be protected for 20 years.47 However, unlike the United States, an annual fee must be paid to maintain the design.48

Registration System

Under a registration system, an application is reviewed for completeness.49 An analysis of the figures is also conducted to determine whether they all depict an article of the same class.50 Figures in different classes cannot be presented in a single application, such as figures showing a lamp and other figures showing a refrigerator.51

In the EU, applicants have two options: they can either register a design with the EU Intellectual Property Office (EUIPO) and obtain a registered Community design (RCD) or commercialize it without registration by relying on an unregistered Community design right (UCD).52 While both options provide design protection, they differ in several key ways. RCDs and UCDs both provide protection against the following: manufacturing, selling, offering for sale, marketing, importing, or exporting a product incorporating a protected design without the consent of its owner.53 RCDs last five years from the filing date and can be renewed periodically for up to a total of 25 years; UCDs only last three years and cannot be extended.54 RCDs and UCDs also differ in terms of protectable scope. An RCD protects a registered design against similar designs, even when the infringing design was made in good faith. However, to enforce a UCD, an infringer must intentionally copy the UCD.55 Further, the UCD’s first disclosure must be in the EU to trigger the enforcement right.56

Unlike the EU, China does not protect unregistered designs.57 Instead, designs must be registered as patents.58 China’s system provides protection for 10 years and allows for products with different functions and identical appearances to be protected in the same design patent application.59 This allows, for example, smartphone manufacturers to protect multiple generations of smartphones with the same design. China also has an absolute novelty requirement for its design patents.60 The absolute novelty requirement means that any disclosure of the design, through sales, advertising, or any other means, throughout the world before filing the Chinese design patent application prevents an applicant from obtaining a design patent.61 But, if a prior design patent application (disclosing the same design) was filed in a country that is a party to the Paris Convention, then the applicant may claim the early application’s priority date for the Chinese design patent application.62

Hybrid System

Hybrid systems incorporate features from both registration and examination systems.63 For example, in Australia and Brazil, designs first follow a registration process.64 However, before the registered design can be enforced, an optional examination process must be completed.65 The hybrid system is therefore optimal for companies that would like to obtain a registration right away but also have the option to examine their registration later, if needed.

Australian design law first requires absolute novelty of a design.66 It not only must be new and distinctive, but also cannot have been published anywhere in the world or publicly used in Australia before the application (either in Australia itself or in a Paris Convention country through a claim of priority).67 Australia also has both a registration and certification stage. The registration stage occurs first. A design is considered registered when it passes a formalities check.68 Once the design is registered, it will be protected for five years from the application filing date and can be renewed for an additional five-year period.69 If the design is not renewed, it then goes into the public domain.70 Registered design holders also have the following rights: (1) protection for the visual appearance of the object; and (2) exclusive rights to use, license, or sell the design commercially.71

Notably, passing the registration stage alone does not allow owners to legally enforce their design. To enforce designs against infringers, the applicant must request that the design proceed to the second step, certification of the design.72 To be certified, the design must be new and distinctive, as discussed above.73 Because Australia does not have a grace period for public disclosure of designs,74 even applicants’ “own earlier design can prevent [them] from protecting a later design.”75 In other words, if anyone, including the design owner, publishes a design before filing the corresponding Australian design application (or the priority application), the publication will be considered prior art.76

Choosing Where to File

With the above analysis in mind, determining where to obtain design protection is complex. Applicants need to consider where the product is made and where their competitors are located. It may be a waste of money to obtain a design patent in the United States, for example, if the product is sold only in Japan and the main competitor is located in Japan. It may also be important to protect designs in the country where they are manufactured, in addition to where they are sold.77 By doing so, competitors will be prevented from selling infringing competing designs and manufacturers will not be able to make the protected design and sell it to another distributor.

Finally, the individual countries’ requirements must be taken into consideration. As seen above, design protections are territorial and dependent on national design laws. Not only does the length of protection differ between countries, but also the requirements needed to have a complete design application. Some countries will reject an application for disclosures of the design even outside the country, while others have grace periods to file an application if a disclosure was made anywhere in the world.

For example, in the United States, a public disclosure is not considered prior art if it was made by the designer within one year before the application was filed.78 However, EU disclosure laws are trickier to analyze. RCDs have a one-year grace period for a disclosure made anywhere in the world, similar to the United States.79 Therefore, an application that starts as an unregistered design could enjoy the benefit of the grace period if the applicant intends to file an RCD by the end of the grace period. However, it is “not possible to have the full 3 years of protection as [a UCD] and then to file an application for [an RCD], as the novelty requirement will not then have been met.”80 Savvy design law attorneys will take these discrepancies into account to maximize the number of jurisdictions where the design can be protected.

Conclusion

Unlike beauty, design patents are not only skin deep. Instead, they require a mastery of several competing systems and countries’ laws. An applicant’s needs and budget should be carefully considered to best determine where they should obtain design patents and enforce their rights.

Endnotes

1. Why Design Protection?, Swedish Pat. & Registration Off., https://www.prv.se/en/designs/why-design-protection/ (last visited Dec. 11, 2018).

2. Id.

3. Design Traditional Total Pendency, U.S. Pat. & Trademark Off., https://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1006 (last visited Dec. 11, 2018).

4. October 2018 Patents Data, at a Glance, U.S. Pat. & Trademark Off., https://www.uspto.gov/dashboards/patents/main.dashxml (last visited Dec. 11, 2018) (showing that the exact time period is 23.9 months).

5. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781-HZ (S.D. Cal. 2017). The case was originally filed in the District of Oregon, and then later transferred to the Southern District of California. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 3:15-cv-00064 (D. Or. Sept. 5, 2017), ECF No. 259.

6. Columbia Sportswear, No. 3:15-cv-00064 (D. Or. Aug. 10, 2016), ECF No. 105 (addressing only the validity of the design patent), appeal docketed, No. 18-1329 (Fed. Cir. Dec. 20, 2017).

7. Jury Verdict, Columbia Sportswear, No. 3:17-cv-01781-HZ (S.D. Cal. Sept. 29, 2017), ECF No. 377.

8. See id.

9. Id. The validity of both design and utility patents are governed by 35 U.S.C. § 103, among other provisions. Under § 103, an invention or design is obvious if the differences between the claimed invention and the prior art would have been obvious to a person having skill in the art, Graham v. John Deere Co., 383 U.S. 1 (1966), or to an ordinary designer, In re Rosen, 673 F.2d 388 (C.C.P.A. 1982). However, design patents have a different framework for implementing this test. First, the court must find a primary reference with design characteristics that are basically the same as the claimed design. Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996); see also Apple, Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012). Under this step, the court needs to “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” Durling, 101 F.3d at 103. Second, once a primary reference is found, other references may be used to modify it to create a design with the same overall visual impression as the claimed invention if the secondary references are “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996).

10. Jury Verdict, supra note 7.

11. 35 U.S.C. § 289.

12. See Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016).

13. 35 U.S.C. § 284.

14. Russ Krajec, Advertising and Marketing Uses for Patents and the Deterrent Factor, Anything under Sun Made by Man, https://krajec.com/advertising-and-marketing-uses-for-patents-and-the-deterrent-factor/ (last visited Dec. 11, 2018).

15. Id.

16. Christopher Heer et al., The Benefits of Use of “Patent Pending, Heer L., https://www.heerlaw.com/benefits-patent-pending (last updated Oct. 8, 2018).

17. Elizabeth D. Ferrill & Elizabeth A. Shah, The Hidden World of Design Patent Prosecution, Finnegan: Our Insights (Dec. 3, 2015), https://www.finnegan.com/en/insights/the-hidden-world-of-design-patent-prosecution.html.

18. Krajec, supra note 14.

19. Id.

20. FAQ on the Hague Agreement, Eur. Union Intell. Prop. Off., https://euipo.europa.eu/ohimportal/en/faq-on-the-hague-agreement (last updated Apr. 18, 2018).

21. Id.

22. Id. (explaining that the currency used is Swiss francs).

23. Hague Agreement Concerning the International Registration of Industrial Designs: Status, WIPO, http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf (last updated Nov. 9, 2018).

24. Id.

25. Id.

26. How to File Your Application: Entitlement, World Intell. Prop. Org., http://www.wipo.int/hague/en/how_to/file/entitlement.html (last visited Dec. 11, 2018). To be entitled to file an IDA, an applicant must satisfy at least one of the following conditions (entitlements): (1) be a national of a contracting party; (2) be a national of a member state of an intergovernmental organization that is a contracting party (such as the EU or the African Intellectual Property Organization); (3) have a domicile in the territory of a contracting party; (4) have a real and effective industrial or commercial establishment in the territory of a contracting party, or only under the 1999 Geneva Act; or (5) have a habitual residence in a contracting party.

27. Locarno Classification, World Intell. Prop. Org., http://www.wipo.int/classifications/locarno/en/ (last visited Dec. 11, 2018) (defining Locarno classification as an international classification used to register international designs).

28. Brent Dougal, Hague—A New Consideration for US Design Applications, Law360 (May 12, 2015), https://www.knobbe.com/sites/default/files/Hague%20%E2%80%94%20A%20New%20Consideration%20For%20US%20Design%20Applications.pdf.

29. Elizabeth D. Ferrill, Selling Globally? Protect Locally—Strategic Planning for Design Rights Worldwide, Full Disclosure (Jan. 2015), https://www.finnegan.com/files/Upload/Newsletters/Full_Disclosure/2015/January/FullDisclosure_Jan15_4.html.

30. Vic Lin, What Is a Design Patent?, Pat. Trademark Blog, http://www.patenttrademarkblog.com/design-patent/ (last visited Dec. 11, 2018) (noting that the overall pendency of design applications in the United States is 20 months).

31. See Frequently Asked Questions, Mewburn Ellis, http://mewburn.com/resource/frequently-asked-questions (last visited Dec. 11, 2018) (“Registration of a registered Community design[] can be very fast—perhaps even as quick as one week.” (emphasis added)).

32. 35 U.S.C. § 171.

33. Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 435 (2016) (“So understood, the term ‘article of manufacture’ is broad enough to encompass both a product sold to a consumer as well as a component of that product.”).

34. 35 U.S.C. § 171(b).

35. Design First Office Action Pendency, U.S. Pat. & Trademark Off., https://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1006 (last visited Dec. 11, 2018) (showing that the exact time to receive a first office action is 13.3 months).

36. See Design Traditional Total Pendency, supra note 3.

37. See 35 U.S.C. § 173; U.S. Patent & Trademark Office, Manual of Patent Examining Procedure (MPEP) § 1505 (9th ed. Rev. 08.2017, Jan. 2018).

38. MPEP, supra note 37, § 1505.

39. 37 C.F.R. § 1.362(b).

40. Ish-oh-o [Design Act], Law No. 125 of 1959, art. 2(1), translated in (Japanese Law Translation [JLT DS]), http://www.japaneselawtranslation.go.jp/law/detail/?id=44&vm=04&re=02 (Japan).

41. 35 U.S.C. § 171.

42. Yoichiro Yamaguchi, Japanese Design Law and Practice, 19 Balt. L. Rev. 417, 420 (1989).

43. Handōtai shūseki kairo no kairo haichi ni kansuru hōritsu [Act on the Circuit Layout of a Semiconductor Integrated Circuits], Law No. 43 of 1985, §§ 2–3, translated in (Japanese Law Translation [JLT DS]), http://www.japaneselawtranslation.go.jp/law/detail/?id=1841&vm=04&re=01 (Japan).

44. Design Act, supra note 40, at art. 5(i).

45. A grace period allows applicants to file patent or design applications within a certain time (usually six to 12 months) after publicizing the invention and not have the previous disclosure be considered prior art to their applications. Specific details about grace period lengths and disclosures to which the grace period applies vary by country. See Grace Periods for Disclosure of an Invention before Applying for a Patent, Mewburn Ellis, http://mewburn.com/resource/grace-periods-for-disclosure-of-an-invention-before-applying-for-a-patent/ (last visited Dec. 11, 2018).

46. Jonathan Osha & Shinya Kimura, Japanese Grace Period Will Be Extended to 12 Months, Osha Liang LLP (June 1, 2018), https://oshaliang.com/newsletter/japanese-grace-period-will-be-extended-to-12-months/.

47. 5.7 Protection of Designs, Japan External Trade Org., https://www.jetro.go.jp/en/invest/setting_up/section5/page7.html (last visited Dec. 11, 2018).

48. Id.

49. Ferrill, supra note 29 (explaining that completeness of an application occurs when “the application states it has five figures and five figures have been filed”).

50. Id.

51. See, e.g., Locarno Publication, World Intell. Prop. Org., http://www.wipo.int/classifications/locarno/locpub/en/fr/ (last visited Dec. 11, 2018) (illustrating that lamps are found in class 26 while refrigerators are in class 15).

52. Designs in the European Union, Eur. Union Intell. Prop. Off., https://euipo.europa.eu/ohimportal/en/designs-in-the-european-union (last updated Feb. 19, 2016).

53. Id.

54. Id.

55. Id.

56. Unregistered Community Design—Copyright-Like Protection against Copying in Europe, Heinonen (Apr. 16, 2014), http://heinonen.com/en/current/unregistered-community-design-copyright-like-protection-against-copying-in-europe/ (“In order to get protection, an UCD must be disclosed in order to become reasonably known to the relevant circles in the European Union.”).

57. Helika Jurgenson, Design Patents and Utility Models in China: Know before You Go, Your IP Insider (July 6, 2017), http://www.youripinsider.eu/design-patents-utility-models-china/.

58. Id.

59. Id.

60. See Zhōnghuá Rénmín Gònghéguó Zhuānlì Fă [Patent Law of the People’s Republic of China] (promulgated by the Standing Comm. Nat’l People’s Cong., Mar. 12, 1984, effective Apr. 1, 1985), art. 23 (“Any design for which patent right may be granted must not be identical with or similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and must not collide with any legal prior rights obtained by any other person.”).

61. See id.

62. Dan Harris, China Design Patents: The Info We Need, China L. Blog (June 9, 2018), https://www.chinalawblog.com/2018/06/china-design-patents-the-info-we-need.html.

63. Ferrill, supra note 29.

64. Id.

65. Id.

66. Don’t Publicise Your Design, IP Austl., https://www.ipaustralia.gov.au/designs/applying-design/dont-publicise-your-design (last updated Mar. 1, 2016).

67. Id.

68. Registration and Certification, IP Austl., https://www.ipaustralia.gov.au/designs/understanding-designs/registration-and-certification (last updated Mar. 3, 2016).

69. Id.

70. Id.

71. Id.

72. Id.

73. Don’t Publicise Your Design, supra note 66.

74. Michelle Lee & Edward Genocchio, Ensuring Valid Protection of Your Design in Australia, Spruson & Ferguson (Sept. 11, 2017), https://www.spruson.com/designs/ensuring-valid-protection-of-your-design-australia/.

75. Registration and Certification, supra note 68.

76. Lee & Genocchio, supra note 74.

77. See How Do I Protect My Registered Design Globally?, IP Foundry, https://ipfoundry.io/how-do-i-protect-my-registered-design-globally/ (last updated Jan. 17, 2018).

78. See MPEP, supra note 37, § 1504.

79. Basic Questions, Eur. Union Intell. Prop. Off., https://euipo.europa.eu/ohimportal/en/cd-general-questions (last updated Apr. 18, 2018).

80. Unregistered Community Design, Eur. Union Intell. Prop. Off., https://euipo.europa.eu/ohimportal/en/unregistered-community-design (last updated May 11, 2018).

Kenneth “Kenny” Matuszewski is an associate at Rabicoff Law LLC, where he practices IP litigation and advises clients on design rights.

Elizabeth Ferrill is a partner in the Washington, D.C., office of Finnegan LLP. She focuses her practice on all aspects of design patents, including prosecution, counseling, post grant, and litigation.

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