Design Patents vs. Registered Community Design of the European Union

Subject matter of US Design Patent and Registered Community Design

Hereinafter, we are strictly using the term “Design Patents” for obtained exclusivity rights according to 35 U.S.C. (§§ 171 – 173), while the term “Registered Community Design” is reserved for exclusivity rights obtained according to Regulation (EC) No 6/2002 on protecting Community designs (CDR).

Design Patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. The design may be consisting of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

On the other hand, Registered Community Design can provide protection for an appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. Product, within the context of Registered Community Design” means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs as such. An ornamental design may be embodied in an entire article or only a portion of the article or may be ornamentation applied to the article. If a design is directed to just surface ornamentation, it must be shown applied to the article in the drawings, and the article must be shown in broken lines, as it forms no part of the claimed design. Registered Community Design can be obtained also for Blueprints, plans for houses or other architectural plans and interior or landscape designs.

From the above-mentioned definitions, it is clear that both registered rights can serve as a protection for visual appearance of a product or a part of the product, packaging, get-up, graphic symbols and typographic typefaces. The product can be whatever is made by hand or in industrial process. The product, however, need not be of physical existence, it can be of a virtual substance, such as graphical user interface (GUI), graphical icons or graphical representation of layout of a mobile phone application. Design Patent nor Registered Community Design do not cover technical function of the product. For this purpose, a Utility Patent of Patent is reserved.

Improper Subject Matter for Design Patents & not-eligible Subject Matter for the Registered Community Design

A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter for Design Patent. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and cannot be registered as a Design Patent. The Design Patent requires a design being „original“. Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a Design Patent Application.

As well as Design Patent, Registered Community Design cannot be obtained for a design, where the shape is dictated by or “only consisting of” technical function. Furthermore, Registered Community Design cannot be obtained for color as such, mere verbal elements, music and sounds, living product (i.e. “a product having natural shape”), concepts and, of course, the design being against public policy and morality. There is also a requirement that corresponds to the distinctive and unique shape. The requirements of distinctiveness corresponds to novelty criteria according to article 4(1) Council Regulation (EC) No 6/2002. Criteria of individual character for Registered Community Design with the meaning of the same article as mentioned above is equivalent to original criteria of Design Patent. One carry a novelty search to be sure that the design is novel and have an individual character.

Comparing both regulations, the subject matter excluded from obtaining the Design Patent or Registered Community Design is similar.

Drawings or Black and White Photographs

The drawing disclosure is the most important element of the application. Every Design Patent application must include either a drawing or a black and white photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, that nothing regarding the design sought to be patented is left to conjecture. Drawings are normally required to be in black ink on white paper. Black and white photographs, in lieu of drawings, are permitted.

It is also possible to represent a design by photograph in Registered Community Design. However, the applicant should bear in mind that the purpose of the representation is to disclose the features of the design for which protection is sought. The representation must be self-contained in order to determine with clarity and precision the subject matter of the protection afforded by the Registered Community Design to its holder. This rule is dictated by the requirement of legal certainty. Thus, the applicant should be careful when submitting an application for the Registered Community Design.

For Design Patents, black and white photographs and ink drawings must not be combined in a formal submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and ink drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the ink drawings as compared with the photographs. Photographs submitted in lieu of ink drawings must not disclose environmental structure but must be limited to the claimed design itself.

In accordance with the practice of EUIPO and the registration proceeding of the Registered Community Design, the combination of several means of visual representation is not allowed. It is recommended that a design shall be represented using only one visual format (e.g. a drawing or a photograph). Therefore, the following combination of a drawing and a photograph depicting the same object is considered unacceptable and thus should not be filed.

Color Drawings or Color Photographs

USPTO accepts color drawings or photographs in Design Patent applications only after the granting of a petition, explaining why the color drawings or photographs are necessary. Any such petition must include the fee. If color photographs are submitted as informal drawings and the applicant does not consider the color to be part of the claimed design, a disclaimer should be added. Color will be considered an integral part of the disclosed and claimed design in the absence of a disclaimer filed with the original application. A disclaimer may only be used when filing color photographs as informal drawings.

EUIPO also accepts color drawings or photographs in applications for Registered Community Design. No fee nor petition are required. No informal submissions of drawings, in parallel to the official filings, are allowed. Thus, if the application contains different not unified representation of the design, an examiner will raise an objection. As well as USPTO, EUIPO considers color representation as an integral part of the claimed design and therefore provide a protection for the embodiment as shown in the European design register. Disclaimer provided in written specification is not taken into account. The description, if any, nor classification in accordance with Locarno system, do not influence the protection as claimed, i.e. as shown in the register.

The Views of the paten design

The drawings or photographs should contain a sufficient number of views to completely disclose the appearance of the claimed design, i.e., front, rear, right and left sides, top and bottom. While not required, it is suggested that perspective views be submitted to clearly show the appearance and shape of three-dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective. Views that are merely duplicates of other views of the design or that are merely flat and include no ornamentality may be omitted from the drawing if the specification makes this explicitly clear. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image. If the bottom of the design is flat, a view of the bottom may be omitted if the figure descriptions include a statement that the bottom is flat and unornamented. The term „unornamented“ should not be used to describe visible surfaces that include structure that is clearly not flat. In some cases, the claim may be directed to an entire article, but because all sides of the article may not be visible during normal use, it is not necessary to disclose them. A sectional view which more clearly brings out elements of the design is permissible, however a sectional view presented to show functional features, or interior structure not forming part of the claimed design, is neither required nor permitted.

On the other hand, Registered Community Designs can be represented with alternative positions of an appearance that can be modified into various configurations without adding or removing any parts. The alternative positions of the movable or removable parts of a design must be shown in separate views. The maximum number of views are seven which correspond to front, back, bottom, top, left and right views + perspective view. Once the applicant tries to submit more views, the examiner will rise an objection. It is clear that it is impossible to shown more features on eighth view since all of them are actually shown on previous sixth. Functional features, as a part of the design can be also shown, preferably disclaimed.

Proceeding before USPTO and EUIPO

Both proceedings on registration of Design Patent or Registered Community Design starts with the filing of an application. The application must contain several necessary elements to achieve a date of filing or priority date, if the application is the first application by the same applicant.

Elements of a Design Patent Application and Registered Community Design

When a complete design patent application, along with the appropriate filing fee, is received by the Office, it is assigned an Application Number and a Filing Date. A „Filing Receipt“ containing this information is sent to the applicant. The application is then assigned to an examiner.

The elements of a Design Patent application should include the following:

1. Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied;
2. Cross-reference to related applications (unless included in the application data sheet).
3. Statement regarding federally sponsored research or development.
4. Description of the figure(s) of the drawing;
5. Feature description;
6. A single claim;
7. Drawings or photographs;
8. Executed oath or declaration.

Compared with Registered Community Design, the applicant has to meet following requirements to obtain a filing date:

1. a request for registration;
2. information identifying the applicant;
3. a representation of the design suitable for reproduction. However, if the object of the application is a two-dimensional design and the application contains a request for deferment of publication, the representation of the design may be replaced by a specimen.

The request for registration is pre-printed on form for filing. The applicant can be any natural person or a legal person or any equivalent institution in accordance with national or international law, e.g. a public authority (Ministry of Industry). The applicant not having a place of business in the  EU must be represented by a professional representative. If not, the application will be refused. The design registered as a Registered Community Design must be classified according to the Locarno classification. Filing fee is nod need for obtaining a filing date but necessary for examination proceeding, thus obtaining the Registered Community Design.

A Single Claim for Patent Design vs. Multiple application for Registered Community Designs

A Design Patent application may only include a single claim. The claim defines the design which applicant wishes to patent, in terms of the article in which it is embodied or applied.

A multiple application for Registered Community Design can be filed and is a request for the registration of more than one design within the same application. Each of the designs contained in a multiple application or registration is examined and dealt with separately. In particular, each design may, separately, be enforced, be licensed, be the subject of a right in rem, a levy of execution or insolvency proceedings, be surrendered, renewed or assigned, be the subject of deferred publication or be declared invalid. Multiple applications are subject to specific registration and publication fees, which decrease in proportion to the number of designs. As a rule, all the product(s) indicated for the designs contained in a multiple application must be classified in only one of the 32 Locarno classes.

Examination of Design Patent Application and Registered Community Design

The actual „examination“ of Design Patent application entails checking for compliance with formalities, ensuring completeness of the drawing disclosure and a comparison of the claimed subject matter with the „prior art.“ „Prior art“ consists of issued patents and published materials. If the claimed subject matter is found to be patentable, the application will be „allowed,“ and instructions will be provided to applicant for completing the process to permit issuance as a patent.

The examiner may reject the claim in the application if the disclosure cannot be understood or is incomplete, or if a reference or combination of references found in the prior art, shows the claimed design to be unpatentable. The examiner will then issue an Office action detailing the rejection and addressing the substantive matters which effect patentability.

EUIPO carries out an examination of the substantive protection requirements, which is limited to two grounds for non-registrability. An application will be refused if the design does not correspond to the definition set out in Article 3(a) CDR or if it is contrary to public policy or to accepted principles of morality (Article 9 CDR). However, novelty or individual character will be examined during invalidation proceeding. If the application for the Registered Community Design is accepted, an electronic certificate is issued.