A New U.S. Design Treaty

James L. Young

By Z. Peter Sawicki,James L. Young

 

Design is the method o f putting form and content together. Design, just as art, has multiple definitions; there is no single definition. Design can be art. Design can be aesthetics. Design is so simple, that’s why it is so complicated.”-Paul Rand

Every day, you most certainly handle or use something that is covered by a U.S. design patent, and don’t even realize it. Obtaining a U.S. design patent is a relatively inexpensive form of IP protection available to your clients, and if they are not taking advantage of such IP protection, they should be. Design protection can serve as a very powerful infringement deterrent in some situations, and provides unique remedies that may be unavailable otherwise if infringement is established. The laws and rules regarding design protection in the U.S. have just been rewritten (literally) because of the entry of the United States into a new treaty. As such, this form of IP protection may have just gotten a lot better for its owners (read: your clients!).

BUT FIRST, WHAT’S A DESIGN?
In the United States, a utility patent (officially – and now somewhat ridiculously – called a nonprovisional patent) typically protects some aspect of the functionality or composition of a technology. A U.S. design patent, on the other hand, protects only the ornamental characteristics of an article of manufacture (like the appearance of a mobile phone, the trim on a running shoe or a computer icon). Internationally, the term industrial design is often used to describe the form of intellectual property that protects designs.

According to the World Intellectual Property Organization (WIPO), an industrial design constitutes the ornamental or aesthetic aspect of an article. Such a design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color.

THE HAGUE AGREEMENT
U.S. intellectual property law is the subject of several treaties, including a new multinational treaty related to design protection. Fully effective May 13, 2015, the Hague Agreement Concerning International Registration of Industrial Designs changes some fundamental substantive and procedural aspects of design protection, both in the United States, and for U.S. applicants world-wide.

While the provisions of the Hague agreement are new to U.S. IP practice and protection, it is actually a rather old set of treaties, dating back to 1934. Most countries protect designs via a mere registration process, while the United States does so using a much more stringent examination-based process. Accordingly, it took a while to work out the necessary details to permit the coexistence and cooperation of such philosophically different approaches to design protection under one procedural umbrella. With the addition of the United States (and Japan on the same day) to the Hague agreement, the treaty’s provisions are now effective in over 60 countries (including those in the EU). Canada, China and Russia are expected to join the Hague agreement within the next few years as well.

SOME SPECIFIC ADVANTAGES OF THE HAGUE AGREEMENT:
U.S. inventors and companies can file a single international design application directly with the U.S. Patent and Trademark Office (instead of having to file separate applications in multiple countries) and can then request registration of that design in other treaty signatory countries. This will reduce the cost of obtaining foreign design protection by eliminating the need to have foreign patent counsel involved in the filing process in each country.

AN APPLICANT CAN CLAIM FILING PRIORITY TO OR FROM AN INTERNATIONAL DESIGN APPLICATION.
For all applications filed on or after May 13, 2015, the terms of all U.S. design patents will be 15 years (U.S. design patents issuing from applications filed before that date have 14-year terms).

With respect to enforcement, pre-issuance publication of a U.S. international design application can provide provisional rights – the possibility of obtaining reasonable royalties for infringement occurring before patent issuance.

The enhanced stature, flexibility and breadth of U.S. design patent law makes having U.S. design patents more valuable than ever for a company to own (read again: “a company” = your client!). Of course, a U.S. design patent is only as valuable as the subject matter that it claims, which is essentially defined by a design patent’s drawings.

The Hague agreement is intended to harmonize many procedural facets of international design protection. The United States, however, continued to maintain rigorous examination standards for design applications as compared to other countries. Presenting the design invention by creating and crafting appropriate illustrations of the inventive design is still extremely important. In order to take complete advantage of design patent protection in the United States, there are many subtle nuances that must be addressed in the application process. Although, relatively inexpensive and seemingly simple when compared to obtaining utility patent protection, it is crucial that each design patent application be drafted carefully and thoughtfully.

Mr. Sawicki & Mr. Young are shareholders at Westman, Champlin & Koehler. Pete & Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans, and to provide customized and effective strategies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki call (612) 330-0581 or James L. Young at (612) 330-0495. Please email them directly at psawicki@wck.com or jyoung@wck.com.