Patent Prosecution Tool Kit: Global Design Patent Guide

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[co-author: Bethany Kokanovich, Senior Paralegal]

Product design holds tremendous monetary value globally. This often leads to successful designs falling victim to knock-offs that can damage brand loyalty and reduce revenue. Design patents, which protect the ornamental appearance of an article, are a proven effective tool in combating copycats. While consumer products, like footwear and wearable technology, are obvious candidates for design patent protection, it is easy to overlook design patent protection for other types of goods such as industrial products, graphical user interface, and type fonts. Below is a sampling of various products that are protected by design patent.

Design Patent Examples

Design Patent Examples
Design Patent Examples

Almost five years ago, the U.S. joined the Hague Agreement, providing U.S.-based entities the possibility of filing up to 100 designs in one International Design Application (IDA) designating multiple countries that are a party to the Hague Agreement. With 73 countries (including 4 of the largest intellectual property offices in the world) now participating in the Hague system, and others, like China, exploring eventual membership, applicants may be wondering what is the better way to secure worldwide protection for a design. In other words, is it better to file a single IDA through the Hague system or file multiple separate national design applications directly with each intellectual property office of interest?

For applicants domiciled or that have a real and effective place of business in a country that is party to the Hague Agreement, filing a single IDA might sound more appealing. Indeed, unlike filing multiple national design applications (which requires an applicant to engage local counsel to make the filing on the applicant’s behalf), filing through the Hague system provides the upfront cost benefit of avoiding the expense of local counsel. It also provides the long term benefit of administrative efficiency because, for example, renewals may be made for all or some of the industrial designs included in the international registration and for all or some of the designated countries.

But, before deciding to filing an IDA, it is important to note that an IDA is examined according to each designated country’s particular rules (which vary from country to country), including whether the IDA will be examined only for formalities or substantively for patentability. And, if an IDA is objected to or rejected during examination, local counsel would need to be engaged to address the objection/rejection, cancelling out the upfront cost benefit of filing an IDA.

Regardless of which filing system an applicant decides to use, there is, in general, limited ability to change the representations of a design and maintain Paris Convention priority after their home country patent application is filed. Therefore, all applicants should be mindful of the particular rules of the countries they plan to direct file in or designate in their IDA to ensure that their initial application contains representations that are ready to file abroad. To that end, the following quick-reference guide provides a sampling of design preparation and prosecution requirements in a variety of countries around the world.

Table 1

[View full Patent Prosecution Tool Kit]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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