Making Sense of International Designs|
There is a new game in town, and it's called an international design. For some time now, the rest of the world has treated "designs" more like trademarks than patents—according to the World Intellectual Property Organization, "an industrial design constitutes the ornamental or aesthetic aspect of an article." In that sense, industrial designs are similar to what we in the U.S. call "trade dress" or the overall look-and-feel of a product that indicates its source and distinguishes it from other products (according to the International Trademark Association). The main difference between an industrial design and trade dress is that there is no requirement that an industrial design conjure in a consumer's mind the source of the item.
In the United States, non-functional designs have long been protected under our U.S. design patent scheme. Design patents are different than utility patents in that they only protect the ornamental or aesthetic aspects of an invention. For example, Ford has literally dozens of design patents for its vehicle grill designs. Our office has filed numerous design patent applications for tire tread patterns. We have also obtained design patents for inventions as diverse as a bee nesting habitat, a level sensing switch, and a gaiter. A single invention can be protected by both utility and design patents, as is, for example, this device for stimulating the meibomian glands of the eyelid.
With a utility patent, the scope of infringement is defined by the patent claims. With design patents, there is a single claim (for the entire design), and the infringing device must
look like the patented design in order for there to be infringement. Generally speaking, design patents are interpreted more narrowly than utility patents.
Less than a year ago, the United States issued regulations fully implementing the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. This means that in the United States, a U.S. applicant may now register his design in multiple countries with a single application. Prior to the adoption of the industrial design registration system by the United States, a U.S. applicant had to file an industrial design application in each country in which he desired to protect his design. The new international design registration process will greatly simplify and reduce costs for U.S. inventors seeking to protect their non-functional designs throughout the world. If no issues are raised by the foreign intellectual property offices, it may be possible to avoid retaining foreign counsel altogether. In this respect, the new international design registration system is similar to the Madrid Protocol (international trademark treaty).
The drawing requirements for industrial designs will vary by country, but in the United States, the drawing requirements for international design applications designating the United States are the same as for design patents. In addition, industrial design applications are subject to the same patentability standards as design patents and are examined by the same group of examiners. Once the design registration is granted in the U.S., it will issue as a design patent. No maintenance fees are due for design patents.