What international protections are available outside of the United States for design patents?
There are a variety of countries outside of the United States that afford protections similar to those enjoyed under design patents in the United States. In most countries, such rights are known as “industrial designs.” As in the United States, industrial designs are used to protect the ornamental appearances of products. This can cover manufactured goods, jewelry, housewares, and a wide range of products. As in the United States, industrial designs pay particular attention to lines, contours, textures, colors and shapes that may make up the aesthetics of a particular product. As with other patents, industrial designs must still be novel, meaning new and not previously in the public domain.
There are a variety of legal avenues to protect industrial designs outside of the United States. Some of the most commonplace are discussed below.
The Community Design is an intellectual property right available in the European Union that is very similar to a United States design patent. It is possible to protect both registered and unregistered community designs through the system. The owner of a Registered Community Design (“RCD”) has the exclusive right to stop unauthorized use of the design on a product that is offered for sale, marketed, imported, stocked, or exported. The “RCD” lasts initially for 5 years and for up to 25 years providing renewal fees are paid in five year increments. An unregistered design only last three years from the time presented to the public.
The RCD is a useful device because a single application, in a single language, with a single administrative location confers exclusive rights to all the members of the European Union, presently 27 states. Future member states will be included. The Community Design filing remains confidential for up to 30 months and it is also possible to include multiple designs related to a similar product in a single application. The RCD system is managed by the Office for Harmonization in the Internal Market (OH IM), headquartered in Alicante, Spain. Any person or business entity, from any nationality, has a right to file a RCD application. There is a 12-month grace period to file for community design.
There are also Community Design courts for enforcing RCD rights and administrative procedures for EU customs authorities to seize suspected counterfeit goods. RCD rights are directly enforceable in each of the member states.
The Paris convention is one of the oldest mechanisms for protecting a design outside the United States. This treaty was signed in Paris France in 1883. The Paris convention now has over 170 members including the United States, the EU, and China. For industrial designs an applicant must simply file an application in the country in which protection is sought within six months of the first filing date in the United States. The applicant must go through the process in each country in which protection is sought. Applicant will then be entitled to whatever industrial design protections may be available to persons or businesses of the country in which the application is filed. The protections available on a country-by-country basis should be considered carefully according to the applicant’s target markets, cost of registration, the strength of the industrial design rights available in a particular country, and enforcement tools available in a particular country. Examples of Paris Convention countries and basic registered industrial design rights are as follows:
|Australia||5 years from registration, 5-year option to extend|
|Brazil||10 years from filing, renewals 5 years each.|
|Canada||10 years from registration|
|China||10 years from filing.|
|Germany||20 years from filing, 5 year renewals|
|Ireland||25 years subject to maintenance fees|
|Israel||15 years from filing subject to fees|
|Japan||20 years from registration|
|Mexico||15 years from filing subject to fees|
|Sweden||15 years from filing subject to fees|
|United Kingdom||25 years subject to maintenance fees|
The Hague Convention (WIPO)
Other than the RCD, a primary mechanism for internationally protecting industrial designs outside of the United States has been by and through the Hague Convention. Like the RCD, the Hague System allows an applicant to register an industrial design in several countries by filing a single international application, in a single language, and with a single set of fees (in Swiss Francs). The Hague System is managed by the World Intellectual Property Organization (“WIPO”). An applicant can file with the International Bureau of WIPO in Geneva Switzerland, or directly in the national office in a country that’s a member of the treaty. The applicant then selects the number of member states in which it seeks protection. The protection is limited to the country in which protection is ultimately granted, but similar to U.S. rights, most member countries have rights that on some level will allow the holder to stop other persons or businesses from making, selling, or importing products which incorporate the design. In many respects, the Hague System is similar to the Patent Cooperation Treaty (“PCT” ) system used to protect utility patents. And like the RCD, the Hague System provides design protection in the EU, and even in some non- EU countries for more than 40 countries. There is some overlap now between the Hague system and the RCD because, since January of 2008, it has been possible to designate the European Community in an application for industrial design filed with WIPO in Geneva, who will then in turn forward the international application to OHIM and it will have the same effect as if the applicant applied directly for a RCD (see above). Under the Hague System, it is also possible to claim priority to an earlier filed application from another country under the Paris Convention or from a country that is a member of the World Trade Organization (“WTO”). To be entitled to make a Hague System filing, the applicant must be a national of one of the Member States, or a Contracting Party participating in the system. The international registration will be good for 5 years, and renewal terms of five year blocks up until the expiration set by the member state in which it is sought to be enforced. Maximum duration varies from state to state from 15 to 50 years.
Recently, and significantly for U.S. applicants, in December of 2012, Barack Obama’s administration enacted the Patent Law Treaties Implementation Act of 2012 which implemented the Hague Agreement Concerning the International Registration of Industrial Designs and the Patent Law Treaty. This agreement will be effective as of December 18, 2013. The effect of the law will be to create a design patent system that works much like the PCT system currently in place for US utility patent applications. The United States applicant will be now be able to participate in the Hague System and file a single international application in the United States and designate countries or “contracting parties” in which the applicant seeks protection. Applicants will be able to claim priority from other design applications. The law will also extend design patent terms to 15 years.
Buche & Associates, P.C., © 2013.