Understanding Design Patents
When it comes to patents, most people immediately think of utility patents, which protect inventions related to processes, products, or materials. However, an equally important but often overlooked category is design patents. The design patents can hold significant value under the right circumstances. Unlike utility patents, which include detailed technical descriptions, drawings, and multiple claims defining the invention’s functionality, design patents focus on the visual appearance of an item. They typically consist of a single claim that references the accompanying drawings, emphasizing the ornamental aspects rather than the functional utility. The United States Patent and Trademark Office defines a design patent as protection for the aesthetic features of an object, highlighting the crucial role that design plays in the overall value of a product.
Legal Framework of Design Patent in Different Countries
United States: In the U.S., design patents are protected under Title 35 of the U.S. Code. The U.S. Patent and Trademark Office (USPTO) grants design patents based on the ornamental design of an article. The term of protection is 15 years from the date of grant (for applications filed after May 13, 2015).
European Union: The EU provides design protection through the Community Design system, which allows for both registered and unregistered designs. Registered designs offer protection for up to 25 years, while unregistered designs are protected for three years.
Japan: Japan offers design patents that protect the design of products for a maximum of 25 years. The system is similar to the U.S, focusing on the aesthetic appearance rather than functional aspects.
India: In India, design patents are governed by the Designs Act, 2000. The Act protects the aesthetic aspects of a design, which must be new and original. The term of protection is 15 years from the date of registration. India’s design system emphasizes the visual features of an article, distinguishing them from utilitarian functions. Design registration in India provides exclusive rights, preventing others from using, making, or selling the registered design without permission.
Revisions in Global Design Intellectual Property Policies
United States: In 2023, the USPTO provided new guidance on the protection of digital designs after several years of inconsistent efforts. This initiative, which began in 2020 under Director Andrei Iancu, sought to address protections for digital and emerging technologies like virtual and augmented reality. However, the guidance now mandates that digital designs must be associated with a display screen, a requirement that falls short of international standards.
Additionally, the USPTO will allow individuals with design-focused degrees to qualify for the patent bar exam starting January 2, 2024. This new category of “design-only” practitioners will be able to focus exclusively on design patent matters. The USPTO is also reorganizing its design department, establishing it as a distinct division with a new Deputy Commissioner for Designs, a significant change to watch in 2024.
European Union: The European Union is currently revising its design protection regulations. In 2022, the European Commission proposed major amendments, particularly the removal of design protection for “spare parts.” This change would make both registered and unregistered Community design rights unenforceable for repairs of complex products, aiming to create uniform treatment of automotive spare parts across member states. While new designs would be impacted immediately, older designs will continue to have a limited protection period of 10 years. The Commission is gathering public input on this proposal before forwarding it to the European Parliament for further consideration.
Australia: Australia has established itself as a leader in modernizing its design system. In 2023, IP Australia focused on the needs of today’s designers by expanding protections to encompass digital and virtual designs. They proposed measures to protect virtual designs, user interfaces, and product elements that are visible only during use, such as icons and designs in virtual and augmented reality. Moreover, IP Australia introduced initiatives to protect partial designs, allowing applicants to claim protection for just a portion of an entire article.
China: China made noteworthy changes to its design law in 2021 by permitting partial design claims, allowing applicants to protect specific portions of products. This update brought China closer to international standards, facilitating the protection of digital designs regardless of their display devices. However, more than 18 months later, implementation has stalled, leading to a backlog of pending partial design applications. Draft examination guidelines were released in August 2021 and again in October 2022, indicating that China’s approach will likely align with practices in other countries.
In May 2022, China joined the Hague International Design System, enabling applicants to file Hague applications designating China. As an “examining office,” China must issue a refusal within 12 months of publication for these applications, or the designs will be automatically protected. The first Hague applications began publishing in summer 2022, some of which include partial designs. To meet its obligations under the Hague system, China will need to start reviewing these applications in 2023, raising hopes that the backlog will diminish.
India: As of December 2022, India has fully embraced a digital system, allowing the majority of submissions to be made electronically. However, assignments still require physical documentation. In addition, design certificates are now issued electronically, enhancing the efficiency of the overall process.
The ongoing revisions in global design intellectual property policies signify a shift toward modernization and greater alignment with international standards. These changes aim to enhance protections for digital designs and streamline processes, fostering a more dynamic global design landscape.
Workflow of Design Patent Application Search
Conducting an effective design patent application search involves several key steps to enhance the results. Here’s a concise guide:
- Keyword Selection
Start with a thoughtful keyword strategy. Move beyond basic searches by extracting terms from invention disclosures, using industry-specific jargon, and exploring technical literature for synonyms. This comprehensive approach helps uncover a broader range of relevant patents.
- Classification Use
Utilize classification systems like the Locarno Classification, which is widely recognized. Additionally, consider national systems (e.g., those in the U.S. and Japan) to improve accuracy and reduce irrelevant results.
- Jurisdiction Awareness
Be aware of the search methodologies unique to different jurisdictions. For instance, the U.S. allows searches in English, while Japan supports both English and Japanese. Tailoring your strategy to these differences ensures comprehensive coverage.
- Database Selection
Choose databases that offer extensive coverage across multiple jurisdictions. Popular options include Questel Orbit, PatSeer, Global Design Database and Design View. A combination of paid and free resources can help you access critical patents.
- Utility Patent Insights
While primarily focused on functionality, utility patents can provide valuable insights into design patents. The detailed drawings found in utility patents often serve as important prior art references.
- Native Language Searches
Recognize that patents may be filed in various languages. Incorporating native keywords can significantly enhance search effectiveness. Tools like Google Translate can help you find the right terms in languages such as German, French, and Chinese.
By implementing these steps, a more comprehensive and effective design patent search can be conducted, resulting in better-informed decisions and outcomes.
How Do Courts Evaluate Design Patent Application?
Insights from the 2023 U.S. Patent Case: Range of Motion v. Armaid on the District Court Docket.
In 2023, Range of Motion Products, LLC filed a lawsuit in the District Court of Maine against The Armaid Company Inc., alleging infringement of U.S. Patent No. D802,155 (“D’155 patent”), which protects the ornamental design of a body massaging apparatus. Range of Motion specifically targeted Armaid’s product, the Armaid2, claiming that its design infringes on the D’155 patent.
| The images below display the design protected by the D’155 patent (on the left), the allegedly infringing Armaid2 (in the centre), and the Armaid1, which serves as prior art (on the right). | ||
 |
 |
 |
The court analyzed the D’155 patent alongside Armaid’s product and a prior art design known as the Armaid1. It noted several similarities between the D’155 patent and Armaid1, including features such as opposable, curved arms, roller cutouts, handles, and a hinge apparatus with multiple size-adjustment slots. However, the court also identified key differences among the three designs:
- Variations in how the hinge apparatus connects to the arm;
- A differing number of adjustment slots in the hinge apparatus; and
- Distinct shapes of the roller cutouts.
A notable distinction for the Armaid2 was its separate hinge apparatus, contributing to a more segmented appearance that differentiated it from the design in the D’155 patent. Additionally, the size-selection slots in the Armaid2 were larger than those in the D’155 patent.
While the court acknowledged some similarities between the D’155 patent and the Armaid2, it emphasized that these likenesses pertained to functional features, which are not protected under design patents. Consequently, the court concluded that the Armaid2 was clearly different from, and not substantially similar to, the design claimed in the D’155 patent. As a result, Armaid’s motion for summary judgment of non-infringement was granted.
Insights from the Havells India Limited vs. Panasonic Life Solutions India Pvt. Ltd. Case (May 31, 2022)
In the landmark case of Havells India Limited vs. Panasonic Life Solutions India Pvt. Ltd. (2022), the Delhi High Court addressed a dispute over design infringement and passing off between two prominent electrical goods manufacturers. The case centered around Havells’ Enticer series of ceiling fans, celebrated for their unique designs and creative trim patterns.
Havells alleged that Panasonic’s Venice Prime ceiling fans bore deceptive similarities to its Enticer series, infringing upon its registered designs and potentially confusing consumers. Conversely, Panasonic contended that its design was sufficiently distinct and posed no risk of consumer confusion.
Upon reviewing the evidence, the Delhi High Court reached a significant conclusion. While the court acknowledged notable similarities between the Enticer and Venice Prime designs, it ultimately ruled that the overall appearance did not constitute substantial similarity, thus dismissing Havells’ infringement claims.
However, the court found in favor of Havells regarding the issue of passing off. It ruled that Panasonic’s use of the Enticer series’ color scheme and trade dress misled consumers into believing that the Venice Prime series was associated with or manufactured by Havells.
The court issued an injunction prohibiting Panasonic from utilizing Havells’ distinctive color scheme and trade dress in connection with its Venice Prime series. Additionally, Havells was awarded monetary damages for the passing off.
The case of Havells v. Panasonic underscores the critical importance of protecting original designs and highlights the risks of unfair competition through design imitation. It serves as a reminder for businesses to exercise caution when adopting similar color schemes and trade dress to avoid misleading consumers and infringing on established design rights.
Conclusion
The design patent application is essential for protecting the visual aspects of inventions and highlighting their importance are beyond just aesthetics. The understanding of design patent’s function and the legal frameworks that govern them in different countries is crucial for innovators aiming to protect their creative works effectively. The ongoing need to update design laws globally reflects the dynamic nature of intellectual property and ensures that protections align with new technological developments.
The process of searching for design patents is key to identifying prior art and assessing the originality of designs. Furthermore, the evaluation of design patents in court, as demonstrated by the Range of Motion v. Armaid case illustrates the critical distinction between functional and ornamental features and Havells India Limited vs. Panasonic Life Solutions India Pvt. Ltd. Case illustrates importance of protecting original designs and highlights the risks of unfair competition through design imitation.
Ultimately, design patents not only help companies maintain a competitive edge but also encourage creativity and innovation. As more businesses recognize the value of their designs, having a solid understanding of design patent laws and effective search strategies will be vital for successfully navigating this complex landscape.
References
- https://www.sternekessler.com/news-insights/publications/international-design-law-global-law-and-policy/
- https://www.sternekessler.com/news-insights/publications/global-design-law-and-policy-gains-and-setbacks-protecting-digital-and/
- https://indiankanoon.org/doc/40534452/
- https://casetext.com/case/range-of-motion-prods-v-the-armaid-co-1
Author(s): Nisha Wadhwa- AVP Patents, Kashish Bajaj- Patent Associate
