Intellectual property plays a vital role in the developing economy. Patent design enables the protection of the aesthetic element of a product design. It is essential that an article appeals to the eye to seek protection. To put it simply, the design law protects only the aesthetic nature or ornamental aspect of an article. Patent design is an important tool for businesses to attract the attention of customers. A visually attractive product doubles the marketability of the product and increases revenue.
To seek protection a patent design undergoes examination prior to the registration by the registry. For a design to qualify for protection it should be novel, original, and applicable to a functional article. It must be visible on a finished article, and there must not be prior publication or disclosure of the design. Design patent protection is limited to the non-functional aspect of an ornamental design of an article.
Patent Design is important for the following reasons –
- Patent design enhances the commercial value of the product.
- Patent design promotes creativity in the industrial and manufacturing sector
- Registration of design patents grants protection to novel or innovative designs that are applied to articles manufactured by the industrial process.
- The holder of a design patent can prevent others from making, selling, using, or importing products that resemble his registered design patent protected under the patent law.
- It gives a competitive advantage to a registered design patent holder. Competitors are restrained from developing visually similar items can be penalized.
- Registration of a design patent is affordable as compared to the utility patent.
- The distinctive shape, formation, patterns, colors, and combination of such shapes or patterns or colors applied to the product enable the customers to identify the product amongst other competitor’s products in the given market.
- Patent design is an asset of the registered owner.
- Registration acts as prima facie evidence in case of infringement
- The owner of the patent design can sell, transfer, or license the registered patent design
Design patent law
International treaties, conventions, and agreements governing design patents are the basic standards of intellectual property protections agreed by the contracting parties. These international treaties, conventions, and agreements provide simple and easy procedures for international application filing that reduce the cost of seeking registration individually in various countries. The treaties, conventions, and agreements governing design patents are –
- Paris Convention, 1883 – It is the first and oldest international convention. Industrial designs (Design Patents) are one form of industrial property that is protected under the Paris Convention. This convention deals with various aspects of industrial property such as design, trademark, patents, trade names, and utility models. The Paris Convention is based on the principles of national treatment, the right to priority, and uniform rules.
- The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995 – TRIPS Agreement was adopted with the objective to reduce distortion and impediments to international trade, to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not become barriers of free trade. Section 4 and Articles 25 and 26 of the TRIPS agreement deal with the provisions of industrial designs.
- Hauge Agreement, 1925 – The Hague Agreement was adopted in 1925 in Hague, Netherlands. This Agreement established the Hague system for international registration for industrial design (patent design) in different through a single application. The application under the Hague system is to be filed in one language and at an economic set of fees.
- Locarno Agreement,1979 – The Locarno Agreement was adopted in 1968 in Locarno, Switzerland. The Locarno Agreement provides the classification and registration of industrial design (patent design). It also provides the number of classes and sub-classes of classification to which the goods incorporating the design patent belong.
Apart from these international treaties, conventions, and agreements, each state has its own intellectual property laws for the protection of intellectual property within its jurisdictions. These national intellectual property laws are guided by international treaties, conventions, and agreements to harmonize the process of registration, the scope of protection, and the remedies against the infringement of the registered intellectual property laws.
Design patent protection in the US
The patent law in the US grants the inventor the right to “exclude others from making, using, offering for sale, or selling” an invention or “importing” it into the U.S. The US Patent law recognizes three categories of patents such as utility patents, design patents, and plant patents. Title 35 of the US Code 35 U.S.C. 171 governs the patent design in the US. A design patent protects “any new, original, and ornamental design for an article of manufacture”. The application for a design patent is made before the US Patent and Trademark Office (USPTO).
Design Protection in European Union
The proprietor of the design has the option to register his design within the jurisdiction of the European Union. A design can be protected by applying to the European Union Intellectual Property Office (EUIPO) before commercializing it and obtaining a registered Community design (RCD). One can opt to directly commercialize the design without registration and seek protection under the Unregistered Community Design (UCD) right.
Design protection in the UK
The Design Registration Act of 1949 governs the registration and protection of designs in the UK. The proprietor of a registered design has the exclusive right in the United Kingdom to make, use, sell, import, and export any product embodying the design, if it is a shape, or bearing the design if it is ornamentation. The application for registration of a design is made to the UK Intellectual Property Office (UKIPO).
Design Protection in India
The Design Act of 2000 and the Design Rules of 2001 govern industrial design (patent designs) in India. The Design Act of 2000 is in compliance with the TRIPS Agreement. The Controller General of Patents, Design, and Trademarks is the authority before which the application for registration is filed.
Term of Design Patent
Design patent validity is for a limited period for the minimum period of ten years. The protection granted to design patents varies from country to country. Such as in the USA, design patents are granted for a term of fifteen years from the date of grant. In India, the patent design is protected for a term of ten years and can be extended for a further term of five years with the payment of the necessary fees. A registered design is protected for twenty-five years in the UK, that can be renewed after every five years. In the EU, the registered Community design (RCD) is valid for a term of five years from the date of filing. The RCD can be renewed after a term of five years each subject to a maximum period of 25 years. However, an unregistered Community design (UCD) is protected for a term of 3 years from the date on which the design was made first available to the public within the jurisdiction of the EU. In the case of UCD, there is no provision for an extension of the term of protection.
Patent design infringement
Design plays a main role in influencing the purchasing decision of the customers. The design patent protects the attributes such as the shape and color of a product that gives an ornamental appearance to it. To determine the infringement of a design patent, it is the non-functional, design aspects that are relevant.
For a patent design infringement claim to be successful it is essential to prove that an ordinary observer fails to point out the difference between a registered design patent article and the accused design article when placed side by side.
The 35 USC § 271 defines infringement as making, using, offering to sell, or selling a patented invention without authority. It also extends to individuals actively inducing infringement, as well as selling, offering to sell, or importing a material part of an invention protected by a design patent.
In Gorham Co. v. White, the US Supreme Court stated that if, “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
Section 22 of the Designs Act of 2000 deals with the piracy of registered designs or the infringement of designs in India. It states that any fraudulent or obvious imitation of a Design that is already registered without the consent of the owner or proprietor of the registered design is unlawful. It also prohibits the import of any kind of substance or material which is in close resemblance to such a registered design.
In case of infringement of a design patent, the holder of the registered design patent may sue for damages that include the loss of profit or financial distress faced by the holder of the design patent. He is also entitled to receive a royalty.
Design patent citation
A patent citation is any document cited by a patent applicant, a third party, or a patent office examiner because it is relevant to a patent application. The citation can be done of any document such as existing patent applications, existing patents, journal articles, research papers, publications on the internet, trade show disclosures, and conference abstracts. There are two types of patent citations namely, backward citations and forward citations. The design patent citation search can be done on online intellectual property databases such as the USPTO website, the EPO’s Common Citation Document website, and the WIPO website.
The reason for the backward citation of patents by the applicant is to bring to the notice of the patent examiner that the applicant is aware of the existing patent and believes that applicant’s patent is novel, original, and non-obvious. While the backward citation is used by the patent examiner to justify and support their decision for the refusal of the application for registration.
Patent citations must be short and follow specific formats. A single citation format must be used for all the citations. APA, i.e., American Psychological Association Style, Chicago Manual of Style, or American Chemical Society (ACS) Style are some examples of patent citation.
In conclusion, patent design grants exclusive rights to the holder of the registered design. Various jurisdictions have a more or less similar set of procedures and practices in place for the registration and protection of registered patent designs. The basic principle is to provide exclusive monopoly rights for a limited period of time on the expiration of which the design falls in the public domain. This principle is the same as that on which the intellectual property laws are based. The laws applicable to the patent design grants exclusive rights along with the remedies in case of infringement.
