Around The World And Back: Making A Champion Out Of Your Design With International Design Rights

Author:Ms Elizabeth Ferrill and Kenneth Matuszewski
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

The rights encompassing designs are as numerous as the number of designs in the world. As Paul Rand eloquently stated above, obtaining a design right may seem straightforward at first glance; however, depending on your client's goals, the process can be complicated. One must consider both whether the right should be obtained and where the design should be protected. This article will discuss these considerations and analyze the major regimes for protecting designs.

Should Design Rights Be Obtained?

The first consideration is whether a design patent should be obtained for a particular design. Generally, if the design is unique or has unique aspects, then the owner of the design should seek protection for it to prevent copying by others or close mimicry.1 Further, design rights will only protect the way an object looks, not how it functions.2 As a result, while design patents themselves may be limited in protection, they are a valuable piece of a comprehensive intellectual property portfolio.

In many cases, design patents will issue or receive a final office action in 19 months.3 In contrast, it takes around 24 months for a utility patent to issue or receive a final office action.4 While the length of time for utility and design patents to issue or receive a final office action differs, applicants may apply for both types when their inventions contain both visual and functional features. For example, Columbia Sportswear obtained the following patents for its Omni-Heat products: U.S. Patent No. 8,453,270 (the '270 patent); U.S. Patent No. 8,424,119 (the '119 patent); and U.S. Design Patent No. D657,903 (the '903 design patent). Specifically, the utility patents claimed a heat management material coupled to a base material in order to direct and maintain body heat. The design patent, however, protected the wavy fabric pattern found in different articles, such as the lining of the jacket.

Obtaining utility and design patents related to the Omni-Heat products paid off for Columbia in at least three ways when it filed a patent infringement suit in January 2015 against Seirus Innovative Techniques.5 First, on summary judgment, the court found the patented design and the accused products were strikingly similar. As a result, the court held that Seirus infringed the '903 design patent.6

Second, after trial, the jury found that the '270 patent was invalid because it was anticipated by the prior art and obvious.7 And the '119 patent was dropped from the suit the evening before the trial began.8 However, the court upheld the validity of the '903 design patent.9

Third, the jury awarded Columbia over $3.4 million in damages ($3,018,174 for the total profit from Seirus's sales of the infringing product and $435,175 as a reasonable royalty).10 As the Columbia case illustrates, compared to utility patents, there is a greater chance of recovering more money damages with a design patent, because the owner may recover for total profits on sales of a product incorporating the infringed design.11 The infringer's total profits are based on the specific article of manufacture embodying the claimed design, so the calculations may involve the complete infringing product or only a component of it.12 In comparison, an owner of a utility patent can only recover damages in the form of a reasonable royalty or lost profits.13

Design patents can also be used to market goods and deter competitors.14 For example, once a design patent application has been filed, the applicant can mark a product that employs the design with “patent pending.” The “patent pending” label tells consumers and retail buyers that the product's design is unique and not offered by any competitors.15 It also signifies that the owners of the pending design patent application are not only innovative, but also serious about protecting and investing in their design.16 Filing a design patent may also cause competitors to doubt their marketing and product development strategies. Because design patents are only published and made available to the public upon issuance,17 competitors will not know what elements of the design will be protected until issuance. As a result, competitors are forced to weigh the potential profits of developing a competing product against the costs of wasted product development and the potential for litigation if the competitor's new product is preempted by an issued design patent.18 Therefore, in some circumstances, it has been suggested that the “patent pending” label may be more effective in the applicant's business than the issued patent.19

Where Design Rights Protection Should Be Obtained

The Hague Agreement

Through the Hague Agreement, design owners are able to obtain protection of their designs in several countries.20 The Hague Agreement is “a system for the international registration of industrial designs” and is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.21 Under the Hague Agreement, an owner of a design may choose to have it protected in the territories of all countries party to the Hague Agreement (contracting parties) by filing one application, in one language, and with one set of currency.22 There are currently 70 parties to the Hague Agreement.23 Significantly, the United States became a party to the Hague Agreement in 2015, and the United Kingdom joined on June 13, 2018.24 Other prominent contracting parties include the European Union (EU), Russia, Canada, South Korea, and Japan.25

To file an international design application (IDA) under the Hague Agreement, the applicant must have a domicile in the territory of a contracting party (or meet one of the other categories for entitlement).26 The application must include: the applicant's name, figures, an indication of the product with a Locarno classification,27 and the number of designs and embodiments.28 In addition, applicants must ensure their IDA meets the specific requirements for each country in which they are seeking design protection. For example, the United States requires an oath or declaration from the inventor(s).


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