As we famous in Are Design Patents Lacking From Your IP Portfolio, a design patent protects the visible decorative traits of an article and will be an necessary a part of an organization’s patent portfolio. Like different patent rights, design patent purposes could also be filed internationally to increase the variety of international locations through which an organization’s designs are protected.
Figuring out the place to acquire safety for a corporation’s designs typically is determined by plenty of components, similar to the place merchandise that includes the designs are being offered, deliberate to be offered, or prone to be copied, the place rivals are situated, the place merchandise that includes the designs are manufactured, and the native patent necessities. No matter these issues, acquiring safety in Europe and China will be priceless for a corporation trying to increase the breadth of safety for its designs. Thus, it is very important concentrate on a number of the latest modifications to design legal guidelines in these jurisdictions.
Design Safety in Europe after Brexit
To acquire safety for designs in Europe, corporations typically have two important choices: (1) file a Registered Group Design (“RCD”); and (2) file separate design patent purposes in particular person jurisdictions. RCDs are typically the extra widespread possibility as a consequence of numerous benefits, together with that they supply a single registration that covers all international locations that make up the European Union. With Brexit, nevertheless, the safety provided by RCDs has modified.
The UK formally left the European Union as of January 31, 2020 and entered an 11-month transition interval that ended on December 31, 2020. Importantly, as of January 1, 2021, RCDs now not cowl the UK. Sadly, which means the prices related to registering designs throughout all of Europe, together with the UK, will enhance for each new filings and for corporations that had initially filed solely an RCD.
For instance, corporations trying to defend a design via registration in each Europe and the UK will now must file each a RCD and a UK design software. In consequence, there might be an elevated price to file and acquire safety in each the European Union international locations and the UK.
For any RCD that’s already registered, the UK Mental Property Workplace (“UKIPO”) will mechanically create a corresponding “cloned” UK design registration. A cloned UK registration created on this method retains the unique submitting and precedence date of the unique RCD, and types a completely impartial UK design registration that may be challenged, assigned, licensed, or renewed individually from the unique RCD. A cloned UK design registration based mostly on a RCD might be allotted a quantity consisting of the complete registration variety of the RCD, prefixed with the digit “9.”
Though the cloned UK design registration is created for gratis, annuities might be due and payable to the UKIPO to stay in power. If an organization already has a UK design registration for a similar design, it could select to not pay the annuities for the cloned UK design registration, leading to termination of the cloned UK design registration. Corporations ought to rigorously think about whether or not their cloned UK design registrations are equivalent to their already pending UK design registrations, and whether or not their cloned UK design registration would add any different safety.
Whereas the UKIPO will now create a cloned registration for RCDs which can be already registered, the UKIPO is not going to mechanically create a cloned UK design registration for any RCD that’s nonetheless pending or in any other case not registered as of January 1, 2021. As a substitute, corporations looking for safety within the UK based mostly on a pending RCD are required to re-file the design software with the UKIPO by September 30, 2021. It will be significant for corporations to concentrate to those deadlines to realize their desired degree of safety in Europe.
Current Updates to Design Safety in China
Europe shouldn’t be the one jurisdiction bringing modifications to its design patent legal guidelines in 2021. Accredited on October 17, 2020 and efficient June 1, 2021, the China Congress handed the Fourth Modification to the Chinese language Patent Legislation to strengthen the safety for design patents in China. As famous in Mintz’s Overview of USPTO Webinar: Understanding Patenting in China, the Fourth Modification extends the design patent safety time period from 10 years to fifteen years along with allowing safety of partial designs and making design patent purposes out there for home precedence claims inside six months of their submitting date.
Not solely does the prolonged patent time period strengthen the safety of designs in China, however it additionally strikes China nearer to becoming a member of the Hague Settlement, as it should develop into aligned with the design patent time period offered by many different jurisdictions and the necessities of the Hague System. Becoming a member of the Hague Settlement will even enable China to be designated as a part of a global design software below the Hague System. In some situations, this strategy might present a less expensive and streamlined technique to receive design patent safety in China. Corporations will nonetheless want to contemplate native drawings necessities when submitting a global design software below the Hague System.
Once more with the theme of harmonization, allowing safety of partial designs aligns the scope of safety offered by many different jurisdictions. It additionally expands the scope of safety offered by design patents in China, as safety could also be obtained for parts or parts of an general machine or product. Moreover, safety could also be obtained for designs that aren’t essentially tied to a selected product—for instance, graphical person interfaces might now not be required to be tied to a selected cellphone, pill, or pc. These modifications to the Chinese language patent regulation contribute to a strengthened and extra priceless design proper in China. In consequence, corporations ought to rigorously craft their design patent technique to receive the suitable degree of design safety in China.