Industrial designs, sometimes referred to as design patents, protect aesthetic/ornamental, non-functional elements of products and are a staple of many IP portfolios. The visual nature of the rights afforded by design patent coverage is often an effective complement to trademark and trade dress protection in competitive consumer markets. In addition, design patent protection may be used either alone or in combination with copyright registration to protect, for example, elements of computer graphical user interfaces. The relative speed of prosecution to obtain issued rights and the presumption of validity of granted industrial designs and design patents can facilitate enforcement efforts in various countries. Filings for design protection at the United State Patent and Trademark Office have increased by nearly 50% over the past 10 years and roughly a third of the annual total applications filed in China are for design patents.
The requirements for obtaining an enforceable design right vary from country to country, but generally require filing of formal drawings and supporting materials with either a national or regional body that grants the design protection. Although design patents must undergo formal examination before grant in the United States, many countries including most European countries do not require examination and allow for immediate enforcement. With the United States and Japan recently joining the Hague System for the International Registration of Industrial Designs, rights can be secured in over 64 countries based on a single filing. Osha Liang’s attorneys have experience securing design protection in all major markets in the Americas, Europe, and Asian countries.
Counseling and Opinion
Cost effective use of design protection as part of a broader IP portfolio requires coordination between other IP rights within the portfolio, as well as an understanding of the different formal requirements of different rights granting bodies. Securing a design right that will stand up in litigation also requires an understanding of how different issues are resolved before national courts and customs agencies. Osha Liang’s attorneys have advised clients on using design protection with their other IP assets in all major commercial markets including Australia, China, France, Germany, Italy, Japan, Russia, the United Kingdom, and the United States of America.
New product launches should also include a clearance process to ensure that there is no infringement of third party design rights. Osha Liang’s attorneys have experience in conducting cost-effective clearance processes to identify such third party rights and, when necessary, providing advice and opinion work to mitigate associated IP risk once the product enters the commercial space.
Litigation based on design protection may be a faster and lower cost option than utility patent litigation to prevent infringement by a third party. In addition, design protection can be a useful alternative or complement to trademark rights including for affecting customs stops and seizures of infringing goods. Osha Liang’s attorneys have experience in counseling clients on litigation matters including the more complex case when multiple countries design protection rights are involved.