July/August 2014
ABPI Magazine
Authored by Elizabeth D. Ferrill, Sanya Sukduang, and Mark D. Sweet
In the United States and Brazil, design patents can be used to secure valuable intellectual property rights protecting the nonfunctional characteristics of a commercial product. While the U.S. and Brazil have systems to protect industrial design, the two systems vary in some fundamental and important ways. As explained in this article, the United States has a somewhat rigorous and lengthy examination process, while Brazil has a two-part process-registration followed by an optional examination process.
U.S. design patents secure intellectual property rights to the nonfunctional characteristics of a commercial product. Design patents can be obtained in the United States for "any new, original and ornamental design for an article of manufacture."1 A claimed design must be "primarily ornamental," meaning that the overall appearance must not be dictated solely by function.2 When there are alternative designs that provide the same function, then the design of the article is more likely to serve a primarily ornamental purpose. For example, design patents may claim the shape of a car, the shape of a fragrance bottle, or the ornamental decoration on a surface of a product, such as wallpaper or paper towels.
The U.S. Patent and Trademark Office ("USPTO") classifies design patents into thirty-three classes, including "apparel and haberdashery," "tools and hardware," and "games, toys, and sporting goods." As examples, depicted below are drawings found in three design patents assigned to Brazilian companies.
The process for obtaining a design patent begins with a patent application filed with the USPTO. Either the inventors or an assignee of the patent application may serve as the applicant.3 Generally, the application must include a title, figures, a specification with a brief description of the figures, one claim, a list of all inventors, and a signed declaration of the inventors.4 U.S. law requires that the inventors be named on the application.
Unlike utility patent applications, design patent applications recite only one claim.5 But, the specification may include more than one alternative embodiment if the embodiments involve a single inventive concept.6 If an application contains more than one inventive concept, the USPTO will require the applicant to choose ("elect") one concept and cancel the others.7 The unelected concepts may be pursued in divisional applications, which must be filed and prosecuted separately, and there are certain legal consequences if the applicant chooses not to pursue all the concepts.
Drawings are the focal point of the design patent application process. And by law, the application must contain a sufficient number of views to constitute complete disclosure of the appearance of the design.8 In practice, this means that a design patent application usually includes a depiction of the top, bottom, front, rear, left and right sides, and perspective views. In some instances, however, additional views may be necessary to fully disclose the design. When two views are the same (or mirror images), such as side views, only one view needs to be depicted and the specification may explain that the other view is, for example, a mirror image. Where a view is not seen in ordinary use (such as the bottom of a large object, like a refrigerator or car), the application may omit this view, provided that an appropriate explanation is included in the specification.
Also, while the applicant need not claim the entire article of manufacture, the whole article must be depicted. Examples of perspective, top, front, side, and bottom views from a zipper pull design patent assigned to Alpargatas are shown below.9
The scope of the claim is primarily conveyed in the lines and shading of the figures. Lines can be represented in either solid or broken form. Solid lines constitute the claimed design, while broken lines (i.e., dashed or dashed-dot lines) are usually included to show visible environmental structure or to define boundaries.10 Broken lines of even length (i.e., dashed lines) are used to define environmental structure that are elements related to the claimed design but do not form a part of the claimed design.11 U.S. Patent D581,758 for Scissors assigned to Mundial, shown above, uses this technique to claim only the handles of the scissor, not the blades.
Alternatively, broken lines of uneven length (i.e., dashed-dot lines) are used to define boundaries that mark where a boundary does not exist in reality, but it is understood that the claimed design extends to the boundary, but excludes the boundary line itself.12 The figure below illustrates a broken line used to define an unclaimed boundary.13
Design patent applications in the United States should also include shading to show the character or contour of the surfaces represented.14 Surface shading is perhaps more common in U.S. design patent applicants than in design registrations in other countries, where shading may not be required (e.g., European Union) or is not permitted (e.g., China). An example of a figure depicting a tube excluding shading (top image) and the same figure including shading (bottom image) is shown below.
Once filed, the design patent application is assigned to a patent examiner in the USPTO's design patent technology center for determining compliance with formalities and patentability. Following initial examination, the examiner will review the application for substantive compliance with U.S. law, including novelty under 35 U.S.C. § 102, nonobviousness under 35 U.S.C. § 103, and certain disclosure and clarity requirements under 35 U.S.C. § 112. If the USPTO determines that an application contains more than one design, it will require the applicant to elect one design.15 As noted above, applicants may file divisional applications on the unelected designs.16
Once the application is examined, the USPTO will issue one or a series of office actions detailing additional information required and/or substantive issues affecting patentability. During this prosecution phase of the application process, the applicant may argue against the examiner's reasoning and usually amend the application to overcome the cited issues affecting patentability. Amendments to the application's drawings are limited in certain ways. For example, environment-related lines (i.e., evenly broken lines) are considered part of the original disclosure and may be converted to solid lines during prosecution, and vice versa.17 Boundary-related lines (i.e., unevenly broken lines), however, generally may not be converted to solid lines because they do not represent actual structural features.18 If converted, the examiner would likely deem the change as an addition of "new matter," absent certain circumstances. New matter is anything added to the claim, drawings, or specification that was neither shown nor reasonably conveyed in the original application.19 If new matter is added to the application during prosecution, the application will not be entitled to the filing date for priority purposes, and any intervening prior art between the date of filing and the date that the new matter was added will need to be considered.
Regarding timing, a first office action is mailed, on average, about ten months after filing. Depending on the type of action, the period for response may be one to six months. If the examiner issues a final rejection, applicants may appeal to the USPTO Patent and Trial Appeals Board and eventually the U.S. Court of Appeals for the Federal Circuit. If the examiner allows the claim, the allowed claim issues as a design patent, after the payment of an issue fee. Approximately fifty percent of design patents are granted without the USPTO raising any objections. On average, design patents issue about fourteen months from filing.20 U.S. design patents have a term of fourteen years from the date of issue.21
Filing expenses related to the application include preparation of drawings or photographs, representative's fees in preparing the application, and government filing fees. As of 2014, the government filing fees amount to at least $760. Additionally, there are fees for various circumstances (such as color photographs or filing an inventor declaration after filing) and for extensions of time to respond to office actions. As of 2014, the issue fee for a design patent is $560, while, unlike U.S. utility patents, there are no renewal fees after the design patent issues.22
When applying for a design patent, the applicant should consider three critical points regarding priority dates and bars to patenting. First, in 2013, the U.S. changed from a first-to-invent to a first-inventor-to-file system. That is, a design may be barred if it was patented, described in a printed publication or in public use, on sale, or otherwise available to the public, anywhere in the world, before the effective filing date of the application.23 Second, any commercial use of a product's design prior to any statutory grace period and prior to filing can lead to a bar on patenting.24 Third, design patents may not claim the benefit of a provisional application, but may claim the benefit of an earlier-filed non-provisional design or utility application, provided there is sufficient support in the priority application.25
United States design patent laws set forth several options for review of a granted design patent. Applicants may request a certificate of correction to correct clerical or minor mistakes made through the fault of the patent office or through the fault of the applicant, provided that the mistake occurred in good faith.26 For more substantive corrections, the patent office can reissue a patent with corrected drawings or a corrected specification.27 Third parties may also request that the patent office review a patent for patentability through what is known as an ex parte reexamination.28 Third parties may also request inter partes review, which is an adversarial proceeding limited to asserting that identified patents or printed publications render the patent invalid.29 Post-grant review is yet another option, which is an adversarial proceeding with fewer limitations on invalidity grounds that can be asserted.30 The costs and time delays, as well as the complexity of the proceeding, associated with each type of review vary considerably.
In the United States, federal law governs design patent infringement actions. An action for enforcement of a design patent must be filed in one of the ninety-four federal U.S. district courts distributed geographically throughout the country. In some cases, plaintiffs can file an action in the U.S. International Trade Commission, which is a regulatory body that controls imports into the United States.31 Appeals for design patent infringement decisions from either type of forum are filed in the U.S. Court of Appeals for Federal Circuit. Further appeals are submitted to the U.S. Supreme Court.32 The time to resolution varies greatly by geographic district-ten months to four years to trial, not including an additional 1.5 years for most appeals to the Federal Circuit.
The test for design patent infringement in the United States is the "ordinary observer test." The test is conducted from the perspective of the ordinary observer who gives such attention as the purchaser usually gives, depending on the cost of the article, and is deemed to be familiar with the similar prior art designs.33 Patented designs are infringed by an accused product when the ordinary observer would find the two substantially the same, such that the observer would be deceived into purchasing the accused product supposing it to be the patented design.34 If these elements are proven in court, a successful litigant may be entitled to preliminary injunctions, permanent injunctions, monetary damages, and, in exceptional cases, attorneys' fees and costs.35
There are a few key differences between U.S. design patents and Brazilian industrial designs that are worth highlighting. Unlike the United States, Brazil has a registration system. In the United States, a design patent application must be submitted, examined by the USPTO, and successfully prosecuted before the applicant can obtain a design patent. Brazilian industrial design applications, however, are only subject to a review by the Brazilian Patent Office ("INPI") for compliance with certain formalities.36 Assuming that no irregularities are found, INPI then registers the application.37 The design registration will remain in effect for ten years, beginning from the date of filing, and is renewable for three successive periods of five years each.38
Applicants may request, but are not required to request, a substantive examination of the application at any time during the life of an industrial design registration.39 If the applicant requests such an examination, INPI reviews the registration for novelty, originality, and lack of industrial application.40 Although not required, some applicants opt for substantive examination so that they can be more certain of the rights they have secured.
Another major difference between U.S. and Brazilian design law is that a Brazilian industrial design application remains unpublished by INPI for six months at most, beginning from the filing date.41 The USPTO, however, will not publish a design patent application.42 The public gains access to the patented design only upon issuance of the patent. On average, the time period between filing for a design patent and the issuing of that patent is about fourteen months.43
Brazilian companies active in the United States or planning to enter the U.S. market should consider whether obtaining a U.S. design patent is feasible. Obtaining both U.S. utility and design patents can, perhaps, more effectively leverage a Brazilian company's innovative products in the United States. If a U.S. design patent is infringed, the patent owner has some powerful remedies such as seeking total profits from the infringing party or an injunction to stop the infringing party from manufacturing and selling products using the infringing design. But Brazilian companies entering the U.S. marketplace should understand that the differences between Brazilian and U.S. design rights systems in order to effectively benefit from the U.S. system.
Endnotes
1 35 U.S.C. § 171.
2 Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002).
3 37 C.F.R. §§ 1.41, 1.46.
4 See 37C.F.R. § 1.153; Manual of Patent Examining Procedure (MPEP) § 1503.
5 37 C.F.R. § 1.153. The claim usually states: "An ornamental design for [the article of manufacture], as shown and described."
6 In re Rubinfield, 270 F.2d 391, 392-93 (C.C.P.A. 1959). The legal standard for a "single inventive concept" is somewhat elusive. For example, the MPEP, at §1504.05(II)(A), instructs patent examiners to consider "[e]mbodiments that are patentably distinct over one another" as more than one inventive concept.
7 See 35 U.S.C. § 121.
8 See 37 C.F.R. § 1.152.
9 See U.S. Patent No. D606,455.
10 See 37 C.F.R. § 1.152.
11 See MPEP § 1503.02 (III).
12 See MPEP § 1503.02 (III).
13 See U.S. Patent No. D680,435.
14 See 37 C.F.R. § 1.152.
15 See MPEP §§ 1504.05, 800.
16 See id.
17 See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
18 See MPEP § 1503.02 (III).
19 See 35 U.S.C. § 132; 37 C.F.R. § 1.121; MPEP § 1504.04.
20 See USPTO, Design Patents January 1988 -- December 2012, 1 (Mar. 2013).
21 See 35 U.S.C. § 173.
22 See 37 C.F.R. 1.362(b); MPEP § 2504.
23 There is a one-year grace period for disclosures made by the inventor or by another who obtained the design from the inventor. The exact bounds of this grace period have not yet been circumscribed by U.S. courts. Therefore, the best practice is to file a design patent application before disclosing a new design to anyone outside of your company.
24 The Federal Circuit has held that even experimental commercial use of an ornamental design can bar patenting. See Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192 (Fed. Cir. 1994) ("We see no way in which an ornamental design for an article of manufacture can be subject to the 'experimental use' exception applicable in the case of functioning machines, manufactures, or processes." (quoting In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988))).
25 See 35 U.S.C. § 172; 37 C.F.R. § 1.78(a)(4); MPEP § 1502.
26 See 35 U.S.C. §§ 254, 255.
27 See 35 U.S.C. § 251.
28 See 35 U.S.C. §§ 302-307.
29 See 35 U.S.C. §§ 311-319.
30 See 35 U.S.C. § 321-329.
31 While the U.S. International Trade Commission can control imports into the U.S. and issue injunction-like relief, it cannot issue relief in the form of money damages
32 The U.S. Supreme Court has discretion over its docket and it is rare for the U.S. Supreme Court to decide to hear patent cases.
33 See Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1363 (Fed. Cir. Jan 25, 2013).
34 See id.
35 See 35 U.S.C. §§ 282, 283, 289.
36 Brazilian Law 9279/96, Art. 106. Formal requirements include the submission of a specification, drawings or photographs, at least one claim, and associated documentation in specific formats.
37 Id.
38 Brazilian Law 9279/96, Art. 108.
39 Brazilian Law 9279/96, Art. 111.
40 Id.
41 Brazilian Law 9279/96, Art. 106.
42 See 35 U.S.C. § 122(b)(2)(A)(iv); 37 C.F.R. § 1.211(b); MPEP § 1120.
43 See USPTO, Design Patents January 1988 -- December 2012, 1 (Mar. 2013).
Originally printed in the July/August 2014 issue of ABPI Magazine. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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