Even sophisticated companies that are well versed in intellectual property rights sometimes overlook the value that can be added by obtaining design patents.

Recent data provided by World Intellectual Property Organization in the "World Intellectual Property Indicators 2021"1shows 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 over year almost every year since 2006.

Moreover, the staggering number of design applications filed in China in 2020 - 770,362 - represents well over half of the applications filed worldwide, and that number may grow further in view of recent changes to Chinese regulations concerning interface designs.

The U.S., by comparison, ranks fourth in filing - behind China, the EU and Korea, and just ahead of Turkey - with around just 50,000 applications in 2020. The WIPO data shows that while U.S. filings have also been increasing to some extent, there is still room to grow.

This article will discuss the important role design patents can play in protecting the investment in a company's products, as well as some of the most significant differences between obtaining design patent protection in the U.S. and abroad.

Benefits of Design Patent Protection

Design patents protect the ornamental design of a functional product, and, if used correctly, they 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 several different circumstances.

First, design patents can be used to broadly protect a companies' so-called design DNA. For example, a company choosing to release a line of products in bottles having a distinctive shape can proactively protect the distinctive bottle shape by thoughtfully obtaining design patent protection.

Doing so will immediately allow the company to distinguish itself from the competition and create a cohesive product line. Other types of protection, such as trade dress rights, may follow eventually, but design patents can offer some protection in the meantime.

Second, design patents can be useful in protecting replacement products or products for which a significant revenue stream will be derived from the purchase of disposable or consumable components. For example, design patents have been used to protect the disposable coffee pods, preventing a competitor from selling competing products and protecting that revenue stream for the company who developed the innovative design.

Some jurisdictions have so-called "must fit" rules that can limit design patent protection in these circumstances - in order to prevent a monopoly and allow competitors to compete on the market - but many places, including the U.S., do not have such limitations.

Third, design patents can serve an important role in preventing counterfeiters and those selling copycat products. For example, a shoe manufacturer can protect certain elements of a shoe design, and that protection will apply to counterfeit shoes, regardless of whether its company or product logo is incorporated into the counterfeit product as well.

Indeed, a new form of counterfeiting has arisen whereby plain counterfeit products are manufactured and shipped into the U.S. without any logo or other trademark, and the logo is shipped separately and added to the counterfeit product later. In such circumstances, trademark protection is not particularly helpful as there are no obvious trademark issues when the products reach customs and border control, the counterfeiting issue arises later.

A bipartisan bill that was previously introduced in Congress sought to close this loophole by allowing customs agents to enforce design patent rights at the border. Customs agents are well equipped to perform this task, and it could help to curb the sale of counterfeit products. Other countries have similar protections in place. Some industry groups and intellectual property organizations have submitted letters in support of this type of legislation and have asked members of Congress to pursue it.

Finally, one area that has seen a lot of growth in design patents is 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 colors, or it can involve protection of detailed display dashboards. When customers use a product, they may become familiar with the interface, and particularly if the interface is memorable or unique, protecting it could help distinguish your product from the competition.

Indeed, in may be possible to gain some protection for software elements that might not otherwise be protectable by utility patents. A design patent covering the iPhone home screen played a significant role in the Apple Inc. v. Samsung Electronics Co. Ltd. litigation in the U.S. District Court for the Northern District of California in 2013, showing the importance of considering this type of intellectual property across diverse technology areas.

Five Considerations for Obtaining Design Patents in the U.S. and Abroad

U.S. design patents are obtained from the U.S. Patent and Trademark Office in a process similar in some respects to the process used for obtaining utility patents: An application is filed, the application is reviewed by an examiner, and, if the design is novel and nonobvious over the prior art, a design patent is issued.

But the design patent systems and requirements vary from country to country. Some countries do not have any examination requirements and instead use something more akin to a registration system, in which validity of the design patent is dealt with later.

Other countries take a hybrid approach whereby the right is registered first but must be examined before the design patent can be enforced. And some countries offer limited protection to unregistered designs, similar to copyrights.

The following are just a few key differences and considerations to take into account when seeking design patent protection.

1. The scope of protection varies by jurisdiction.

Most countries have different laws concerning design patents and will offer patentees different scopes of protections. For example, the U.S. does not allow patents covering logos, unconnected to an underlying article, or holographic projections, whereas those may be protectable in other countries.

Some jurisdictions allow an applicant to claim just a portion of an article, whereas others require that the whole article be claimed. Differences in what is protectable may require changing the approach by jurisdiction.

2. Different countries have different unity of design requirements.

Jurisdictions differ on how many designs can be included in a single patent. Some countries have strict requirements limiting design patents to a single design, whereas others are expansive and allow for connected rights. In the U.S., multiple designs can be covered in one patent if the designs are patentably indistinct.

3. Different countries have different functionality requirements.

Design patents are intended to protect designs that have an underlying function, but design rights may be precluded where the design is dictated solely by function. The functionality test varies from jurisdiction to jurisdiction.

The degree of functionality is a key consideration. Is the design dictated solely by function? Is the shape indispensable to secure a function? Or are alternative designs available showing that there is more than one ornamental design that will serve that function? Depending on the standard, the protection allowable may differ. Korea, for example, permits protection of a functional design if there is an alternative shape available.

4. In the U.S., the claim must match the design patent title.

In the U.S., the claim of the design patent must match the title of the design patent. As a result, it is important to be careful when converting design patent applications from other jurisdictions.

In the 2019 Curver Luxembourg SARL v. Home Expressions Inc. decision in the U.S. Court of Appeals for the Federal Circuit, a design patent claimed a specific pattern.2When the application was filed in the U.S., the title was revised to specify "Pattern for a Chair." A motion to dismiss was granted in a case seeking to assert infringement by a basket using the pattern shown 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 among jurisdictions.

Different jurisdictions have different conventions and requirements for the submitted drawings. Some countries require more views than others. The allowability and meaning of using certain techniques, like shading, differs as well. So before importing the same drawings from another application, it is important to make sure that the drawings comply with the requirements.

Submitting noncompliant drawings may cause written description problems and result in patent claims that do not cover the product you are seeking to protect.

Moreover, in the U.S., in some instances the drawings included in the patents issued by the USPTO are of low 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 issued patent, that controls, in the case of ambiguity.3

Summary

Companies should not overlook the potential benefits of seeking design patent protection for their products. While, in many cases, utility patent applications will be filed first, it is important not to delay in filing design patent applications once design elements of the product start being finalized. Working proactively and collaboratively with counsel will ensure that the right protection is obtained and that design patent rights are strong and offer protection in all the most important jurisdictions.

Footnotes

1. https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2021.pdf at 130.

2. Curver Luxembourg v. Home Expressions  , 938 F.3d 1334 (Fed. Cir. Sept. 12, 2019).

3. See Panasonic Corp. v. Getac, Inc.  , Case No. 8:19-cv-01118, 2020 WL 4728081 (C.D. CA. Aug. 3, 2020).

Originally published by Law360.

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