When most people think of patents, or intellectual property (IP) protection generally, they most often think of utility patents, which protect inventions that are new (novel), useful (functional) and non-obvious.  Many people do not realize that ornamental aspects of otherwise functional goods may also be protected by patent, specifically by design patent.  Design patents are the United States Patent and Trademark Office (USPTO) equivalent of foreign registrations for industrial designs.

Although design patents are unfamiliar to many, they have been crucial in protecting industrial designs for many years and are becoming increasingly more important.  According to a recent World Intellectual Property Organization (WIPO) study, the filing of design patent applications more than doubled between 2004 and 2011!

Some examples of industrial designs protectable by design patent include the shape of the VW Beetle, iPod and Fender Stratocaster guitar, to name a few.  The recent battle between Apple and Samsung, which centered largely on design patents, also serves as an illustration of their rising importance.

For many years, the United States, along with many other countries, has had its own rules governing design patent protection, which differed in some significant ways from those of other major international patent systems.  These differences created myriad inconveniences for those attempting to obtain international protection for their industrial designs, which was compounded by the lack of a centralized facility for submission of such applications.  The Hague Agreement Concerning the International Registration of Industrial Designs created the Hague System for the International Registration of Industrial Designs to address such issues.

The original Hague Agreement was drafted in 1925, in an effort to coordinate and streamline submission and prosecution of international design patent and industrial design applications by providing a simplified procedural avenue to obtain industrial design protection in member countries.  This agreement underwent major revisions in 1934, 1960 and 1999, during which time its membership grew considerably.  The Hague System created by those agreements is currently administered by the World Intellectual Property Organization (WIPO).

The 1999 amendment to the Hague agreement, also known as the Geneva Act of the Hague Agreement, is just now being implemented in the United States via the Patent Law Treaties Implementation Act of 2012 (PLTIA).  This act creates a new international design application that entitles U.S. applicants to file a design application in the 45 member countries that are contracting parties of the Geneva Act of the Hague Agreement.  Likewise, applicants whose countries or regional systems are members of the Geneva Act can file applications in their home country, designate the U.S. for examination and receive an examination on the merits from the USPTO.

Particularly noteworthy changes to U.S. design patent law ushered in by the PLTIA include: an increase in term from 14 to 15 years from grant; enabling of U.S. domestic priority and foreign priority entitlements arising from international design applications; and publication of such applications, by default, 6 months after their submission (although the applicant may elect to defer publication or to have the application publish immediately).  The PLTIA also provides provisional rights resulting from publication of the international design application designating the U.S.  This means that, assuming a U.S. design patent eventually issues and is substantially similar to the design published in the international application, the patent owner may be entitled to a reasonable royalty from any person who makes, uses, offers for sale, sells in the U.S. or imports the claimed invention into the U.S., during the period between publication of the application and issuance of the patent.

Another noteworthy change is that an applicant may include multiple designs in one international design application designating the U.S., as long as those designs are within a single, internationally standardized class, referred to as a Locarno class.  Applicants must be cautious if attempting this however, as they may find themselves filing several divisional applications in the U.S., which will still require that each distinct design be spun-off into its own design patent application.

Please Spread the Word

This is one small example of how, here at MCR, we try to keep the community informed of the changing legal landscape.  Please contact me or anyone here for more information and pass this along to anyone you know who may be interested, or in need of intellectual property legal services.

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