Design Patent Protection and Term of Protection in Different Countriesadmin
Design Patent Protection and Period of Protection in Different Countries
Out of the four types of intellectual properties (IPs): Patent, trade secrets or know-how, trademarks and copyrights, patent has been one of the most important property right which gives protection to the inventors for their innovation. Patenting system came into existence to promote innovation. Patent owner has the right to stop others from using his/her invention for the period, the patent has been granted by patenting authority of the country or the international patenting authority as the case may be. Each country has its own patenting authority. In the United States, U.S. Patent and Trademark Office (USPTO) grants and manages the various issues regarding patenting and their protection. There are three patent categories that include plant patents, design patents, and utility patents. The focus of this paper is on design patent.
2 What is Design Patent
USPTO has defined a design as “the visual ornamental characteristics embodied in, or applied to, an article of manufacture”. It further explains that as a design is manifested in appearance, the design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. It is important to note that a design for surface ornamentation cannot be separated from the article to which it is applied, and therefore, cannot exist alone. In other words, a design must be a definite pattern of surface ornamentation, applied to an article of manufacture. A design patent is granted to any person who is the inventor of a new, original and ornamental design for an article of manufacture.
3 The scope of protection provided by the design patent
The important point to understand about the design patent is that it provides protection only for the appearance of the article. It does not protect the structural and the utilitarian features of the product. For example, in case of an ornamental LED luminaire (A table lamp) (Figure is given below), the design patent could be taken for the ornamental shape or appearance of the table lamp only and not for its functional aspects.
4 USPTO’s Codes governing the design patents
Seven codes have been laid down by the USPTO to govern the design patents that include 35 U.S.C. 171, 35 U.S.C. 172, 35 U.S.C. 173, 35 U.S.C. 102, 35 U.S.C. 103, 35 U.S.C. 112, and 35 U.S.C. 132. In addition to this, the rule pertaining to the drawings to disclose the design patent are covered by Code of Federal Regulations 37 CFR § 1.84, 37 CFR § 1.152, and 37 CFR § 1.121.
Figure: UltraBrite LED luminaire, Input 12 V, 3.0 amperes
Source: UltraBrite, manufactured in China, distributed by PAR INTEK, America, Inc.
5 Design Patent VS Utility patent
The difference between the design and the utility patent is important one to understand. The design patent is about the appearance and how the article is seen (35 U.S.C. 171) but the utility patent is about the functionality and the use of the article ( 35 U.S.C. 101). Patents for the both can be taken on the same article if both features are available in the article. Utility and ornamentally of an article are not easy to separate even though legally the two different patents can be obtained for the design patent and utility patent as the product can contain both the characteristics: the ornamental characteristic as well as the functional characteristic. Attached figure of the decorative LED table lamp has unique attractive shape, contours and color to obtain design patent and at the same time it has some unique features, such as portability, small base to occupy small floor area, white light, adjustable 4 levels of illumination, and ventilation facility. These unique features enhance the functionality and the usability of the table lamp. The manufactured article (the table lamp) has features fit for the design patent as well as for the utility patent.
Under Section 35 U.S.C. 171, a design patent cannot be obtained for an article of manufacture that is primarily dictated by the functions at the time of manufacture and lacks the ornamentally of the article and there is no unique or distinguishing feature like shape or appearance. In addition the design of the article should be “Original”.
6 How to get Design Patent and Design Patent Term in various countries
The government in each country establishes patent granting authority, who receives patent applications for grant of patents for innovation made by the inventors.
World Intellectual Property Organization (WIPO) with 90 countries as member under the umbrella of ‘The Hague System of International Registration of Industrial Designs’ provide single window facility for international registration for the design patents. See https://www.wipo.int/hague/en/ for more information and the list of member countries. Under the ‘The Hague System of International Registration of Industrial Designs’, one single application is to be filed to get the patent in as many countries as an applicant desires. Payment of fee is to be made only at one window directly to the International Bureau (WIPO). See https://www.wipo.int/hague/en/faqs.html.
Similarly, 40 member countries in European Union (EU) as per the EPO convention can obtain Registered Community Design (RCD) from EUIPO after an applicant has first registered the design patent application in his/her country for obtaining national design registration. See for more information https://euipo.europa.eu/ohimportal/en/what-we-do.
Different countries have their own patenting process and norms for granting patents. The protection period for the design patents vary from country to country Information about the patenting authorities, patent law and the protection periods about select countries are given below. The countries are selected on random basis with an attempt to cover different regions in the world.
6.1 The United States of America (USA) Design Patent and Term
6.1.1 Name of the organization granting patents in USA: United States Patent and Trademark Office (USPTO)
6.1.2 Patent Law: United States Code
6.1.3 Design Patent protection period: The design patent protection prior to 13 May,2015 was for a period of 14 years. However, after 13 May, 3015, a new design patent has a life of 15 years from the date application filing, assuming it issues.
6.1.4 Accepted mode of drawings: A patent application should be accompanied with either a drawing or a black and white photograph of the claimed design. The disclosure requirements as specified in 35 U.S.C. 112, should be complied by the attached drawings or photograph in sufficient number of views to provide full disclosure of the appearance of the design. Drawings are to be drawn in black ink on a white paper meeting the requirements of 37 CFR §1.84(b)(1) and §1.152..
6.2 The United Kingdom (UK) Design Patent and Term
6.2.1 Name of the organization granting patents in UK: UK Intellectual Property Office (IPO) or The European Patent Office if the application is filed under European Patent Convention.
6.2.2 Patent law: Patent Act 2004
6.2.3 Design patent protection period: Patentee can protect the design and has the right to prevent others from using it for up to 25 years, provided the registered design is renewed every 5 years by paying the registration fee.
6.2.4 Accepted mode of drawings: Design drawings should include line drawings, computer-aided design (CAD) or rendered CAD or photographs that present the design as it appears. The drawing should be drawn on a plain background without hiding any details by shadows or reflections. Either all drawings or all photographs should be used. Combination of both should not be used. If it is desired to show a pattern, then complete pattern should be shown to display complete pattern. There should not be more than 12 illustrations. In case of applying for design patent online, use one file per page. If sending the application by post, the drawings should be on plain A4 paper. In case, there is need to send more than 12 drawings to illustrate the invention, the drawings should be sent by post.
6.3 Spain Design Patent and Term
6.3.1 Name of the organization granting patents in Spain: The Spanish Patents and Trademark Office (SPTO)
6.3.2 Patent law: Spanish Intellectual Property Law
6.3.3 Design patent protection period: 5 years from the date of filing, renewable for further 5 year periods up to a maximum of 25 years. Additionally, community designs are protected in the European Union (EU). Community design system is recognized throughout the EU, via a dual system of protection: registered and unregistered designs. Registration for community design is granted for 5 years from the date of filing, renewable for further 5 year periods up to a maximum of 25 years. Unregistered community designs are acquired automatically without the need of filing, simply by disclosing the products to which the design is applied. The protection for unregistered design is for a period of three years from the date the design was first made available to the public within the EU (Garrigues iCEX, 2019).
6.4 Sweden Design Patent and Term
6.4.1 Name of the organization granting patents in Sweden: The Swedish Patent and Registration office.
6.4.2 Patent law: Design Protection Act
6.4.3 Design patent protection period: Protection is valid for maximum 25 years for registered Community designs. Unregistered designs has protection for 3 years from the date the design was made public
6.5 Germany Design Patent and Term
6.5.1 Name of the organization granting patents in Germany: The German Patent and Trademark Office.
6.5.2 Patent law: Act on the Legal Protection of Designs (Designgesetz, DesignG)
6.5.3 Design patent protection period: Protection for a registered design lasts up to 25 years maximum from the filing date.
6.6 France Design Patent and Term
6.6.1 Name of the organization granting patents in France: National Institute of Industrial Property.
6.6.2 Patent law:
6.6.3 Design patent protection period: Period of protection of an industrial design is five years from the filing date, extendable four times up to 25 years.
6.7 Russia Design Patent and Term
6.7.1 Name of the organization granting patents in Russia: you can apply at Russian Patent and Trademark Office (Rospatent) for national patent.
6.7.2 Patent law: Russian Patent Laws (Art.1340, 3, Civil Code)
6.7.3 Design patent protection period: Five-year period from the filing date. The patent can be renewed for further five-year periods on payment of a renewal fee up to a maximum of 25 years from the date of filing. Alternatively, a regional Eurasian patent application is made, designating Russia, with the Eurasian Patent Office, which is alternative to the filing of a national Russian patent application with the Russian Patent Office. In case of filing of the patent with EU, the effective terms of the exclusive right to an industrial design is 15 years from the date of filing extendable up to 10 years (EU, 2010).
6.8 The Netherland Design Patent and Term
6.8.1 Name of the organization granting patents in the Netherlands: The Netherlands Patent Office, a department of the Netherlands Enterprise Agency.
6.8.2 Patent law: The Dutch intellectual property laws.
6.8.3 Benelux design, via the Benelux Office for Intellectual Property (BOIP). Period of protection is for 5 years, which can be extended 4 times for a period of 5 years each and up to a maximum of 25 years.
18.104.22.168 Community Design, via the European Intellectual Property Office (EUIP) in Alicante, Spain This offers exclusive protection throughout the entire European Union. Protection is provided for a maximum of 25 years; the rights must be renewed every 5 years.
6.9 Italy Design Patent and Term
6.9.1 Name of the organization granting patents in Italy: Italian Patent and Trademark Office or The European Patent Office if the application is filed under European Patent Convention.
6.9.2 Patent law: Intellectual property laws of Italy.
6.9.3 Design patent protection period: The industrial design patent in Italy is valid for five years from the date of filing and may be further renewed for one or more periods of five years each up to a total term of 25 years from the date of filing (IPcoster, Italy).
6.10 Norway Design Patent and Term
6.10.1 Name of the organization granting patents in Norway: Norwegian Industrial Property Office.
6.10.2 Patent law: Norwegian design act
6.10.3 Design patent protection period: 5 years from the date of application made and can be renewed for further 5 years up to a total maximum period of 25 years. Each period shall run at the end of the previous period.
6.11 Japan Design Patent and Term
6.11.1 Name of the organization granting patents in : Japan Patent Office.
6.11.2 Patent law: Japanese design act.
6.11.3 Design patent protection period: 25 years from the date of application.
6.12 Australia Design Patent and Term
6.12.1 Name of the organization granting patents in Australia: IP Australia
6.12.2 Patent law: Design Act 2003, updated up to 27 February 2020.
6.12.3 Design patent protection period: design registration lasts for 10 years.
6.13 Nigeria Design Patent and Term
6.13.1 Name of the organization granting patents in Nigeria at nigeria-law
6.13.2 Patent law: Patents and Designs Act, Chapter344, Laws of the Federation of Nigeria 1990.
6.13.3 Design patent protection period: Registration of an industrial design-
(a) shall be effective in the first instance for five years from the date of the application for registration; and
(b) on payment of the prescribed fee may be renewed for two further consecutive periods of five years.
6.14 Philippines Design Patent and Term
6.14.1 Name of the organization granting patents in the Philippines: Philippine Intellectual Property Office (IPO).
6.14.2 Patent law: Republic Act No. 8942, also known as the Intellectual Property Code of the Philippines
6.14.3 Design patent protection period: Industrial design patent for five (5) years from filing date of the application and may be renewed for not more than two (2) consecutive periods of five (5) year each.
6.15 China Design Patent and Term
6.15.1 Name of the organization granting patents in China: The Patent Office of the People’s Republic of China
6.15.2 Patent law: Patent Law of the People’s Republic of China
6.15.3 Design patent protection period: patent right for designs shall be ten years, counted from the date of filing.
Each country has its own patent authority. Application for international design patent can be made via the World Intellectual Property Organization (WIPO) from a single window service facility. Similarly, in European Union (EU), member countries can register for RCD within one year of national registration for design patent in his/her own country. The period of patent protection varies from country to country and ranges between 10 years to 25 years. Similarly, the design patent drawings have different requirements in different countries. Since consistency is very critical in getting Design patent and stand in court of law if required it is always advisable to take help of expert of patent drawing firms to get consistent views. It is ok to make your own drawings for utility patent application but not advisable for design patent application unless your expert in drawings as well as rules of patent office in which you intend to file.
If you want to get help from us who are experts in doing design patent drawing at affordable cost say USD 35 to USD 55 depending on complexity, please contact us by filling below contact Form.
Community designs – PVR – Sweden
Design Act Patentstyret – Norway
Design IPR- Spain 06-Propiedad-industrial-e-intelectual.
Design Patent Application Guide _USPTO
Designs Act 2003 Australia
- 2010. Booklet: Patent System In Russia. Publication of European Union. 1-20.
Intellectual Property Protection in the Philippines
IPcoster Italy. Industrial design registration in Italy. https://www.ip-coster.com/IPGuides/industrial-design-italy
MOJCP and FOJ. 2017. Act on the Legal Protection of Designs. Published by Ministry of Justice and Consumer Protection and Federal Office of Justice. 1-28. www.gesetze-im-internet.de.
Patent Law of the People’s Republic of China – China &Trademark Office
Patents and Desct, Chapter 344, Laws of the Federation of Nigeria 1990
Patents_ Manual of Patent Practice – GOV.UK
UltraBrite, manufactured in China, distributed by PAR INTEK, America, Inc.