U.S. Design Patent Considerations for Chinese Companies

21 October 2010 Publication
Author(s): Marshall J. Brown



By Marshall J. Brown, Foley & Lardner LLP

This article is part of our Fall 2010 edition of Legal News: China Quarterly Newsletter, Eye on China.

Like industrial design registrations and design patents in many countries, U.S. design patents can serve as an effective tool to prevent competitors, counterfeiters, and other parties from copying your company’s proprietary designs. While the process for obtaining a U.S. design patent is fairly straightforward, there are several aspects to design patents that are unique to the United States. Many of these features provide applicants and patent holders with valuable benefits not available elsewhere, while others place particular burdens on inventors and attorneys. These issues need to be recognized when maneuvering through the process of obtaining a design patent. The following discussion focuses on a few of the aspects unique to the U.S. design patent system.

  1. The 12-month grace period. A U.S. design patent application may be filed up to 12 months after the design is first described in a printed publication, is in public use in the United States, or is offered for sale in the United States. This provides companies with the opportunity to determine whether a product will be sufficiently successful to warrant the investment in a U.S. design patent.
  2. Fast prosecution. Unlike utility patents, most U.S. design patents can be examined and granted very quickly. In fact, it is not uncommon for a design patent application to be allowed in well under a year. This time frame can be accelerated further if an applicant files a request for expedited examination. Under this expedited examination process, if the applicant conducts its own prior art search and provides the results to the examiner, the applicant may receive a Notice of Allowance in a matter of weeks.
  3. No annuities. In contrast to many countries, the United States does not require the payment of annuities or maintenance fees to keep a design patent in force. Therefore, once the issue fee has been paid, no further fees are due during the 14-year term of the patent grant.
  4. Ornamentation can be claimed, but at a price. In addition to the general configuration of an article, a design patent can include features such as contrasting colors or materials, indicia, or other types of ornamentation that are applied to the article. If these features are included, however, they form part of the patent claim. Therefore, a third party who copies the product configuration but not the claimed ornamentation may not infringe the design patent.
  5. Substantive examination. Unlike design patent and industrial design applications in many other countries, U.S. design patent applications undergo a full substantive examination. This includes a full analysis of whether the design at issue is anticipated or obvious over the prior art. Although prior-art-related rejections are infrequent, foreign applicants should recognize that substantive examination does occur, particularly when the differences between the applied-for design and the applicant’s earlier designs are small. In situations such as these, an examiner could reject the claimed design on novelty and/or obviousness grounds.
  6. The duty of disclosure. As is the case for U.S. utility patents, everyone associated with the filing and prosecution of a U.S. design patent application has a duty to disclose all information that is “material to patentability.” Relevant prior art patents, publications, offers for sale, and so forth that are known to the applicant must be disclosed to the examiner. Because there is no similar requirement in most countries — especially for design patents or industrial designs — it is especially important to inform local inventors and attorneys of this duty. A failure to disclose material prior art can render the design patent unenforceable.
  7. Individual features can be disclaimed — after the initial filing. Features that are shown in solid lines in an initial application can later be changed to be shown in broken or dashed lines. In other words, it is possible to disclaim certain features of a design after filing, either during the prosecution of the original application or in subsequent continuation applications. This can be a valuable tool if another party is copying some, but not all, features of the applicant’s design, since it may be possible to disclaim the “differences” from the claimed design in order to increase the likelihood of infringement.
  8. Post-issuance amendments are possible. Even after a design patent has been granted, one can broaden the patent’s scope in some situations. A patent holder can file a “reissue” patent application after a design patent has been granted. If such an application is filed within two years of the original grant date, the scope of the claimed design can be broadened — for example by changing solid lines to broken lines. The reissue application can therefore provide a valuable weapon against potential infringers.
  9. Infringement does not require identical designs. According to the U.S. Supreme Court, a patented design is infringed “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Under this “ordinary observer test,” exact identity of the designs is not required.
  10. The infringer’s profits can be recovered. Unlike utility patents, U.S. law permits a design patent holder to recover the profits made by the infringer on the infringing design. This can be relatively easy to prove in litigation, particularly in comparison to determining a reasonable royalty or the patent holder’s lost profits due to the infringement.

The items discussed above describe just a few ways that U.S. design patents differ from comparable types of registrations in other countries. A firm understanding of these differences can greatly aid you in the decision of whether to file a U.S. design patent, what should be claimed, and what other steps you can take to maximize the value of the design patent.

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