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Protecting Your Industrial Designs in the United States, Europe and Around the World

When most people think of patents, they think of utility patents, which in the U.S. and in most foreign countries protect functional aspects of inventions. Some example inventions that would be eligible for utility patent protection include a more efficient automobile engine, a new drug for treating cancer, and a method of controlling microprocessors to increase the speed of computers.

Industrial designs are different as they relate to appearance rather than function. In the U.S., industrial designs are usually protected with design patents, which protect only the ornamental or aesthetic qualities of an article. Though less widely known than utility patents, design patents can be effective and very economical tools for developing international marketing strategies for new products.

Industrial Design Basics

Examples of articles protected by design patents in the U.S. include automotive bodies, the shapes of soda bottles, and designs for furniture. As design patents protect only appearance, in these examples design patents would not protect the aerodynamic qualities of the automotive bodies, the increased storage or gripping qualities of the soda bottles, nor the improved comfort and durability of the furniture.

Industrial design registrations corresponding to U.S. Design Patents are available in most foreign countries and several regional intellectual property systems. Depending on jurisdiction, they may be called design patents, industrial designs, design registrations, design certificates, or just simply designs.

Design Patents in the U.S.

The overall cost to secure a U.S. Design Patent is typically much lower than for a utility patent. Design patent applications do not require much written content beyond a single claim, drawings, and a few short drawing descriptions. Official government fees are also much lower for designs.

Although U.S. Design Patent Applications are reviewed by examiners, design applications are much less likely to be rejected or scrutinized prior to allowance. Unlike a utility application, it is not unusual for a design application to be allowed after an examiner's initial review. Once issued, U.S. Design Patents remain in force for single 14-year non-renewable terms and are not subject to maintenance fees.

Industrial Designs in Europe and the International Arena

International filing requirements, examination standards, registration terms, and enforcement standards against infringement vary greatly for designs. A patent attorney should be consulted before embarking on any international design registration activity to coordinate complex and often incompatible requirements between international jurisdictions.

The Paris Convention for the Protection of Industrial Property is a treaty that allows grace periods for filing utility patent and design applications in additional countries after an initial application has been filed in a first "priority" country. The Paris Convention allows a one year grace period for utility applications, but limits the grace period to six-months for designs. U.S. Design Patents are considered industrial designs under the Paris Convention.

Another international registration system is the Office for Harmonization in the Internal Market (OHIM), which serves as a central design registry for countries of the European Union (EU). The OHIM applies to industrial designs but not to utility patents. OHIM Design Applications allow for a single application to be filed in a single official EU language, such as English. Upon registration, an OHIM Design Registration becomes enforceable in all the member countries of the EU. In some narrow circumstances, the OHIM also allows for the filing of a registration to be delayed for up to three years after the first public disclosure of a design. For a nominal fee, it is also possible to combine several U.S. Design Patent Applications into a single OHIM design application.

By allowing additional time for planning and by reducing the overall number of applications to be filed, such international systems can significantly reduce, offset, or delay the overall costs of securing and maintaining international protection for industrial designs.

For more information about patents and industrial designs, please contact Jon Woodard at MacDonald, Illig, Jones & Britton, LLP at 814-870-7664 or jwoodard@mijb.com.