Hague international design patents

Hague countries, by L. tak: CC-BY-SA-4.0

The Hague system allows you to use one application to file design patents in many countries simultaneously, but it is quirky and doesn’t work everywhere.

Thinking of filing your US design patent application outside the US?  Although for some countries like Canada, China, and India, you will have to file locally, for Europe (EU), Japan, and Korea, consider using the Hague system.  In either case, think fast, because the deadline is often just six months after your initial filing.

What is the Hague system?  The Hague system (Hague Agreement Concerning the International Registration of Industrial Designs) is a series of international treaties allowing applicants from participating countries to directly register design patents in other participating countries.  If you or your company is not a resident of a participating country, you are out of luck.  You must get international coverage the hard way by finding a local representative and filing with the local patent office.

The US signed up in 2015.  Other countries are also in the process of joining but are not in yet. There are presently 66 countries participating.  So as the map shows, coverage is still rather uneven.

The rules are not totally uniform. The drawing requirements and extent of post-filing examination can vary between countries.  The EU, for example, limits design drawings to a maximum of seven views, but otherwise, acts as a registration system that doesn’t require much subsequent effort.  By contrast, like the US, Japan also requires examination as well, and the applicant must thus do additional activities and pay additional fees.

Unlike US design patents, the Hague system allows for multiple related designs to be registered at the same time in one application.  However for those thinking of gaming the system for US design patents, realize that the USPTO will require you to select just one design, and pay extra to examine any other versions.  Still, if you are feeling indecisive, this is an interesting option to consider.  However, note that the Hague system also publishes all design applications within six months of filing, while the US does not, so there can be less confidentiality.

Hague system registrations must be renewed every five years, and can generally be renewed up to a total of 15 years total coverage. By contrast, after a US design patent has issued, the USPTO will give you 15 years of coverage with no maintenance fees.

Like other patents, the USPTO will accept Hague system patent applications and forward them on to the international office in Switzerland.  This should be the default method for US applicants because even design patents must pass a security review and get clearance before the applicant has permission to apply elsewhere.

Intellectual property for cheerleaders

Cheerleader
Is the uniform decoration “functional”?

In Star Athletica v Varsity Brands, the Supreme Court ruled that copyrights can cover the industrial designs of clothing, 3D objects, and other useful (functional) things.

The boundaries between different areas of intellectual property, such as copyrights and patents, can be fuzzy.  Copyrights, among other things, cover artistic images and 3D sculptures on various media or “articles”, but the artistic feature must be able to exist separately from any functional (useful) part of the underlying media.

Copyrights v design patents: Copyrights require only minimal originality, are cheap, and last for generations. But, if you want to claim an ornamental design for a functional (useful) item, this falls into design patent territory. Design patents have a higher threshold for originality, are more expensive, and only last for 15 years.

Some things, such as clothing, and other 3D designs that combine artistic/ornamental and useful/functional aspects, fall into multiple areas, but not always as one might predict. Clothing “knock-offs” exist because the overall pattern or cut of clothing is conclusively (legally) presumed to be functional, hence copyright exempt. So this goes into the design patent bin. However artistic fabric patterns can be copyrighted.

Which brings us to the cheerleaders, and the Supreme Court’s (SCOTUS) recently decided Star Athletica v. Varsity Brands case.  This teaches lessons that apply to other mixed artistic/functional things as well, such as 3D objects. So you folks with 3D printers, listen up!

Cheerleader uniforms have certain characteristic lines and colors, and Star Athletica copyrighted a number of these designs. Varsity Brands, possibly believing that fashion knockoffs are no big deal, copied them, got sued, and the case eventually made its way to SCOTUS.

Varsity had some interesting legal arguments – namely that the lines and colors were functional (no copyright) because they distinguished the uniform as a cheerleader uniform. However, SCOTUS didn’t buy it. They cited Mazer v Stein, an earlier 1954 SCOTUS case, where an artistic statute was ruled to have retained copyright protection even when used as a lamp base (made functional). Like this earlier case, SCOTUS ruled that if an otherwise copyrightable feature can be perceived as art separate from the useful article, then the feature can get copyright protection.

Unintended consequences?  So we can have an ornamental design for a functional item (design patent).  We can also have a useful item with an artistic feature (copyright); at least when the artistic feature can exist independently of the useful item. Confusing, and there may be some unforeseen economic issues. Although SCOTUS relied on the previous 1954 Mazar case, copyright laws have changed since 1954.  Copyright now automatically attaches to nearly everything and lasts nearly forever.

In any event, if you are planning on doing fashion knockoffs, be careful.  In fact, if you are any manufacturer planning on incorporating “an old art design” into a functional object, be careful.

Design patent infringement

Three-way visual comparison test
Three-way visual comparison test

Design patent infringement isn’t based on exact copying. Rather the test is if an “ordinary observer” will see “substantial similarity”. 

Determining if a particular design of interest does, or does not, infringe upon another design patent is an interesting gray area of intellectual property law.

According to the 2008 Federal Circuit ruling in Egyptian Goddess, Inc. v. Swisa, Inc.” 543 F.3d 665: to infringe, a given design does not have to be an exact copy of another design patent.  Rather, the question is one of “substantial similarity” under the “ordinary observer” test.

Great — what the heck is this, and how does this test determine design patent infringement?

The underlying idea is that customers looking to purchase a design patented product “Y” should not be deceived by similar looking product “X”.

So as a practical matter, you should run this test using ordinary observers. Realize that if you personally are involved, it may be difficult for you to be fully objective.  In this case, you are probably not a suitable “ordinary observer”.  Instead, determine if disinterested outsiders see “substantial similarity“.

Although sometimes the differences between a given design and a particular design patent may be so great that no further comparisons are necessary, sometimes the designs are close. Here a “three-way visual comparison test” can be useful. This test can be done by making a composite illustration showing the patented design on one side, the “accused design” (i.e. the design being investigated) in the middle, and other designs representing the closest prior art on the other side.

Essentially it is a pattern recognition problem.  The idea is to use the prior art examples to instruct the ordinary observers as to how much variation is typical in this field.  Then the ordinary observer can determine if the design of interest is overly close to the design patent of interest, or not.

This sort of approach was used to compare handheld blender designs in Braun Inc. V Dynamics Corp. 975 F.2d 815, in 1992.  As you can see in the above image, the “accused design” was visually much closer to the patented design than it was to the closest prior art. The court determined that the “accused design” was in fact infringing.

The best times to consider these issues are before you start producing and selling a new design. So if you have a new design that you are worried about, get the opinion of some neutral outsiders ASAP.  Indeed, consider running some focus groups as appropriate. If things look too close, consider making some further design changes, and trying again.

Design patents

For stronger design patents – less detail can give you broader coverage, so consider turning some solid lines into dotted lines.

design patent
Design patents can be like the disappearing Cheshire Cat

On the surface, design patents – a patent that covers the ornamental appearance of an article of manufacture, seem simple. File multiple drawings showing your design from multiple angles – often all six sides of an imaginary cube, as well as in perspective. If (under a famous court case called the Egyptian Goddess test), an ordinary observer (familiar with the prior art designs of similar products) will confuse someone else’s product with the patented design, then there is infringement.

This raises interesting questions of pattern recognition. The problem is often explained by analogy to the Cheshire Cat from Alice in Wonderland.  How much of the cat do you need to see in order to identify it as a Cheshire Cat?

In a design patent, the parts that are required are shown in solid lines, and the optional parts are shown in dotted lines.  As more and more solid lines are turned into dotted lines, the design becomes more general, but of course at some point, the design then becomes too general to be unique or even recognizable.

When broad coverage of a design is desired, consider filing multiple versions (or alternatively continuations) of a design patent.  Narrower but safer versions can have more solid lines; in riskier but broader versions, replace the less essential solid lines with dotted lines.  Perhaps a subset or outline of your product is distinct enough to warrant design patent protection?  If you think that your design may have multiple distinct sections, consider putting in dotted lines to show these sections in the initial filing, since the USPTO won’t let you do it later.

Compared to utility patents, design patents are relatively inexpensive to file, and relatively easy to get.  However again, the design patent is only for the artistic and non-functional aspects of the design. Design patents now have a 15 year lifetime, and no maintenance fees are required.

A few more tips — design patent examiners have a well-developed ability to detect inconsistencies between drawings and/or ambiguity in drawings.  Problems can often be avoided by first making good quality 3D CAD files, and then making these 3D CAD files available to the patent attorney.