New International Design Patent Application, Increased Patent Term Now in Effect

Executive Summary

For those considering the use of design patents as part of their patent protection arsenal, an additional system for pursuing domestic and foreign design rights is available to United States applicants starting today, along with associated changes to U.S. design patent law.

The U.S. previously signed on to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague System”), which is now in effect for U.S. applicants.

The Hague System provides procedural efficiencies by allowing an applicant to file a single “International Design Application” to pursue design rights in all or some of the 64 countries of the Hague Union, which includes the U.S., the European Union, Japan, and South Korea. Other countries, including Canada, China, and Russia, are considering membership.

Coinciding with the availability of the Hague System to U.S. applicants, U.S. design patent applications filed beginning today enjoy a 15-year patent term from the date of issuance of the patent – increased from the prior 14-year term – regardless of whether the application is filed using the Hague System or directly in the U.S.

Why Pursue Design Patents?

Design patents help protect the visual or ornamental aspects of products. Whereas a utility patent protects the functionality of a product, design patent protection aims at capturing would-be copycats. Without a design patent, your competitor could offer a lookalike product that functions differently yet fools customers into believing that the product is the same as yours. You would not then be able to stop your competitor’s sales, and consumers might assume the same product functionality based solely on appearance. Even when a competitor sells a product that infringes your utility patent, infringement of your design patent may be easier to prove due to the inherent complexities of utility patents. Design patent infringement can result in substantial damages awards; for example, in the Apple v. Samsung case, the jury awarded damages in excess of $1 billion, a substantial amount of which was attributable to design patent infringement.

Design patents can offer practical advantages. Design patent applications are far less expensive to prepare than utility applications, and also move through the U.S. Patent Office more quickly. Once issued as a patent, maintenance fees are not required to keep a design patent in force in the U.S.

Notable Change Taking Effect Today for All U.S. Design Patents

For all U.S. design patents filed beginning today, the patent term has increased from 14 to 15 years from patent issuance, regardless of whether the Hague System is used. This includes continuation and divisional applications. Accordingly, if you have a pending design patent application, you may want to consider filing a continuation or divisional application to take advantage of the increased 15-year term.

Notable Features of the International Design Application

Importantly, the Hague System does not create a set of uniform examination requirements for each member country of the Hague Union. Each member still has its own standards and requirements for examination that must be satisfied in order to receive enforceable design rights in that jurisdiction. For example, some members, such as the European Union, permit computer-aided design (CAD) renderings for drawings, while others, such as the United States, require line drawings. Thus, while a single International Design Application can serve as the basis of a design registration in many countries, it is prudent to seek the advice of a local practitioner prior to filing to ensure that the single application will meet the requirements for the particular country of interest.

International Design Applications are published six months after the registration date (the registration date is typically the same as the filing date). Regular, non-Hague U.S. design applications are not published, and only become publicly available when they issue as a patent.

Because International Design Applications are published, provisional rights in the U.S. are available when using the Hague System. With provisional rights, once the design patent issues, you may be able to pursue a reasonable royalty for infringing activity that occurred after publication and prior to issuance of the design patent. Without provisional rights, you can only enforce the design patent against infringing activity that occurred after issuance.

Takeaways

• U.S. design patents issuing from applications filed May 13, 2015 or later will have a 15-year term.
• International Design Applications will typically publish six months after registration.
• Provisional rights will be available in the U.S. for international design registrations which designate the U.S.
• Design patents should be considered whenever a product has an ornamental appearance which could be valuable in the marketplace.