An absolute novelty design patent trap for the unwary

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Global design patent strategies are increasingly used by retail and consumer product companies as a cost effective way to protect key product lines. However, it is important to understand the different nuances of global design patenting strategies, as there are pitfalls for the unwary, especially in Australia and China.

First, what is a design patent? Design patents protect the ornamental design of articles by means of figures representing the covered article. In contrast, utility patents protect an article on the basis of its function or use, without focusing on the ornamentation or design of the article. In practice, design patents can be used to protect the design of a wide variety of items, from smartphone home screen icons to shoe designs to home appliances. For example, famous design patents have been issued for iconic board games, toys, smartphones, designer shoes, cars, and guitars, to name a few.

As the copying and counterfeiting of retail and consumer products have become more common, many companies have started to protect their products, especially those with shorter product cycles, by using patents. Design.

Design patents are generally less expensive to prepare and file. Like utility patents, design patents can be filed in most jurisdictions around the world. In the United States, design patents have a term of 15 years from the date of grant and do not require additional fees after grant (compared to utility patents which have a term of 20 years from the date of grant). the earliest priority date and require payment of a series of maintenance fees over the life of the patent). Additionally, and perhaps most importantly, design patents typically pass through the US Patent & Trademark Office and foreign patent offices very quickly, in many cases with minimal or no examination. So, given the short time between filing and grant, design patents are effective in protecting retail and consumer products with shorter product cycles, compared to utility patents which often take a long time. take longer to go through US and foreign patent offices, and are more expensive. To keep.

Searching for design protection outside of the United States is relatively straightforward. Many foreign jurisdictions have a design registration system without substantive examination, which makes it possible to obtain design protection relatively easily, quickly and at low cost. For example, Europe and the UK have a design registration system. Many retail and consumer product companies seek design patent protection in the United States and in strategic overseas markets such as Europe, Asia and Australia.

But a trap for the unwary is not understanding some of the unique facets of design patents and registration systems, such as certain requirements in some jurisdictions for prior disclosure of the item covered by the design.

Some countries, notably Australia and China, apply what is called an “absolute novelty” system for patents, including design patents. What does it mean? This means that any disclosure made before filing a patent application in these jurisdictions is fatal to the application. For clarity, it should be noted that Australia has a two-part design system. First, a design can be registered. However, this registration does not allow the application of the design against infringing users. To have the ability to perform, the design must be examined to certify the design, which is a second step in the Australian system, and when the state of the art resulting from the public disclosure of the design can come into play. .

Here is a scenario that can happen. An applicant has an invention and files a provisional application in the United States covering that invention believing they have space reserved for their patent right. After this provisional filing date, the applicant publicly discloses the invention, for example via social media and the website. The applicant then files a utility application and claims priority over the provisional application. At the same time as the utility application, the applicant files a design patent relating to the design of the article of invention; of note, a design patent cannot claim priority over provisional application. The applicant also files a series of foreign design applications claiming priority over the design patent filed in the United States, including China and Australia. Public disclosure is not an issue when it comes to utility or design filing in the United States since public disclosure was made by the inventors and occurs within one year of the design patent filing. But public disclosure in this scenario can be fatal to Chinese and Australian design claims if it shows the item covered by the design claims in those jurisdictions.

The good news is that Australia is amending its patent laws to allow a 12-month grace period for disclosures before filing. This amendment comes into force on March 10, 2022. This aligns it with other major foreign jurisdictions, which allow a grace period of 6 or 12 months. It is important to note, however, that the law is only effective for designs filed after this date. China, however, remains a jurisdiction of absolute novelty (or no grace period) and this must be taken into account before any public disclosure of the subject matter of the patent.

Therefore, it is important when developing an overall patent strategy to carefully consider the potential impact of public disclosures of an article in view of the anticipated filings of the application, especially out-of-state filings. -United and in particular, in China, and in the near term, Australia. Having a filing strategy and a disclosure strategy planned can prevent any mishap as described above.


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