October 3, 2022

Volume XII, Number 276

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October 03, 2022

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An Absolute Novelty Design Patent Trap for the Unwary

Global design patent strategies are increasingly being relied upon by retail and consumer products companies as a cost-effective way to protect key product lines.  However, it is important to understand the various nuances of global design patent strategies since there are traps for the unwary, most notably in Australia and China.

First, what is a design patent?  Design patents protect the ornamental design of articles through figures depicting the covered article.  In contrast, utility patents protect an article based on how it operates or how it is used, without any focus on the ornamentality or design of the article.  In practice, design patents can be used to protect the design of a wide variety of items from smartphone home screen icons to shoe designs to household appliances.  For example, famous design patents have issued for iconic board games, toys, smartphones, designer shoes, cars, and guitars, to name but a few.

As copying and knockoffs of retail and consumer products has become increasingly commonplace, many companies have started protecting their products, particularly those with shorter product cycles, using design patents.

Design patents are typically cheaper to prepare and file.  Like utility patents, design patents can be filed in most jurisdictions around the world.  In the United States, design patents have a term of 15 years from the date of grant, and require no additional fees after grant (as compared to utility patents which have a 20 year term from the earliest priority date and require the payment of a series of maintenance fees over the life of the patent).  Further, and perhaps most importantly, design patents typically proceed through the US Patent & Trademark Office and foreign patent offices very quickly, in many cases with minimal to no examination.  Thus, given the short time from filing to issuance, design patents are effective in protecting retail and consumer products with shorter product cycles, as compared to utility patents which often take much longer to proceed through the US and foreign patent offices, and are more expensive to maintain.

Seeking design protection outside the United States is relatively straight forward.  Many foreign jurisdictions have a design registration system with no substantive examination, enabling design protection to be obtained with relative ease, speed, and lower cost.  For example, Europe and the United Kingdom have a design registration system.  Many retail and consumer products companies seek design patent protection in the US and in strategic foreign markets such as in Europe, Asia, and Australia.

But a trap for the unwary though is not understanding some of the unique facets of design patents and registration systems, such as certain requirements in certain jurisdictions regarding prior disclosure of the article covered by the design.

Certain countries, most notably Australia and China, follow what is referred to as an “absolute novelty” system for patents, including design patents.  What does this mean?  It means any disclosures made prior to the filing of a patent application in those jurisdictions is fatal to the application.  For clarity, it is worth noting that Australia has a two part design system.  First, a design can be registered.  However, this registration does not allow for enforcement of the design against infringing users.  To have enforcement ability, the design must be examined to certify the design, which is a second step in the Australian system, and when the prior art arising from public disclosure of the design may come into play.

Here is a scenario that can happen.  An applicant has an invention and files a provisional application in the United States covering this invention thinking that they have a placeholder for their patent right.  Subsequent to that provisional filing date, the applicant makes public disclosure of the invention such as through social media and Internet site.  The applicant then files a utility application and claims priority to the provisional application.  At the same time as the utility application, the applicant files a design patent covering the design of the inventive article; of note, a design patent cannot claim priority to the provisional application.  The applicant also files a series of foreign design applications claiming priority to the design patent filed in the United States, including in China and Australia.  The public disclosure is not a problem with respect to the utility or design filing in the United States since the public disclosure was made by the inventors and is within one year of filing of the design patent.  But the public disclosure in this scenario can be fatal to the Chinese and Australian design applications if it shows the article covered by the design applications in those jurisdictions.

The good news is that Australia is changing its patent laws to allow for a 12 month grace period on disclosures prior to filing.  This amendment goes into effect on March 10, 2022.  This brings it in-line with other major foreign jurisdictions, which allow for a 6 or 12 month grace period.  It is important to note though that the law is only effective for designs filed after that date.  China however remains an absolute novelty (or no grace period) jurisdiction and this must be considered prior to any public disclosure of the subject matter of the patent.

Hence, it is important when devising a global patent strategy to carefully consider the potential impact of public disclosures of an article in view of planned filings of the application, particularly filings outside of the United States and in particularly, in China, and in the near term, Australia.  Having a filing strategy and a planned disclosure strategy can prevent any mishaps as described above.

Copyright © 2022, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume XI, Number 357
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About this Author

Daniel G. Shanley, Andrews Kurth, oreign utility attorney, design patent applications lawyer
Partner

Daniel focuses his practice on electro-mechanical patent matters. His practice includes preparing and prosecuting U.S., P.C.T. and foreign utility and design patent applications; patent office post-grant proceedings; strategic counseling and due diligence; managing complex patent prosecution dockets; conducting studies of patent validity and infringement; performing freedom-to-operate studies; and assisting with intellectual property licensing and litigation. He has expertise in a variety of fields, including automotive, medical devices, oil and gas, electronics, marine...

202-662-3047
Steven L. Wood Patent Attorney Hunton Andrews Kurth
Counsel

Steve advocates for clients in all aspects of patent property law across a variety of technologies.

With an intellectual property practice encompassing mechanical devices, remote monitoring and control systems, telecommunications systems, e-commerce services and financial services, Steve advises clients on complex issues of claim construction, infringement, and validity in both patent litigation and post-grant review proceedings. He also provides advice to clients on patent portfolio management and strategy.

Steve’s...

202-955-1965
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