Design patent protection has become very important in today’s high stakes, competitive markets. A design patent protects an article’s appearance, versus a utility patent protecting its construction or operation. Design patents have been issued protecting the designs of the iPhone 7 cellular phone, Mac Pro laptop computer, Apple Watch wristwatch and Beats headphones, all of which have significant competitive value separate and apart from their functions.
Companies like Google and Facebook protect their graphical user interface designs through worldwide design patents. With the then largest jury verdict in a patent case handed down in the Apple vs. Samsung (having a number of Apple’s design patents at issue), it is no wonder that design patents have increased in popularity and recognition as important competitive tools and extremely valuable property rights.
United States design patent law changes have streamlined international design patent application filing and the issuance of design patent protection worldwide. In May 2015, the United States became a signatory to the Geneva act of the Hague agreement concerning the international registration of industrial designs (the “Hague Agreement”). United States applicants can now obtain design patents in any of 66 countries or regions by filing a single international application directly with the World Intellectual Property Organization (WIPO) or the United States Patent and Trademark Office (USPTO). This eliminates the need to file a separate application in each country. Now, a United States applicant can initiate the design patent examination process by filing a single international application, selecting one or more contracting countries and proceeding under the Hague Agreement. Substantive examination will then be conducted under the laws of each selected country.
The European Union, Japan, Norway, Switzerland, South Korea, the United States and numerous other countries (presently totaling 66) can be included in the single Hague Agreement application. Argentina, Australia, Brazil, Canada, China and Russia are currently not contracting parties, but are expected to sign on in the near future.
The United States’ becoming a signatory to the Hague Agreement has produced many cost effective improvements in United States design patent laws. Specifically, the term of design patents in the United States is now 15 years from the date of issuance, adding one year to the previous term of 14 years. Updating or changing information in a filed international design application has also been streamlined. When a change of ownership occurs in a design patent application, notification can be provided to one receiving office to accomplish the update in all selected countries. The applicant of an international design application can be the inventor(s) or an entity such as the assignee.
Companies seeking broader protection for their designs can now file additional applications containing photographs or color drawings without the additional costs of preparing a petition or paying a fee. The international design application under the Hague Agreement will publish in six (6) months. Patentees receiving issued design patents may be able to recover a reasonable royalty as damages for infringement occurring after the date of publication up to the date of issuance of their design patent. This change parallels the current law for United States utility patents.
The United States enactment of the Hague Agreement for design applications provides a very cost effective and streamlined process for protecting an applicant’s designs in multiple countries. We look forward to assisting companies in developing an intellectual property strategy to take advantage of these recent procedural improvements and cost reductions in adding international design patent protection to their portfolios.
*All product and company names are trademarks or registered trademarks of their respective holders.
Steven Shape is a registered patent attorney and electrical engineer who has represented preeminent technology companies in complex, high-stakes intellectual property litigation and foreign patent and trademark prosecution matters since 1982.
Steven Shape has successfully represented clients in complex business litigation concentrating on patent infringement and defending infringement claims, trademark and Lanham Act claims, copyright claims, unfair competition claims, false advertising claims, trade secret claims and related antitrust and business causes. He has served as counsel in a number of jury and bench trials and has extensive experience in all aspects of Federal Court litigation including preliminary injunctions, summary judgments and appeals.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.