In the world of intellectual property, “design” refers to the ornamental, aesthetic, and generally non-functional aspects of a product. Design protection is gaining recognition as an important, cost-effective, and relatively simple procedure for companies to secure a measure of exclusivity that provides them with means to take legal action against copycats and counterfeiters. In this article, we provide a brief overview of the current status of design protection in major markets including Israel, China, Europe, Japan, and the United States.
Current protection for industrial designs in Israel is governed by the 1924 Patents and Design Ordinance1. This will soon change as the Israel Designs Bill, currently in the legislative process, will provide a framework for a more progressive means of protecting the ornamental aspect of a product. One of the major changes to be introduced by the Bill is protection of unregistered designs, subject to certain conditions, for a period of three years from the date of first publication2. Another, long-awaited change in the Bill, is the introduction of a 12-month grace period during which design owners will be allowed to publish their designs without such publication being considered a prior disclosure, for purposes of registration. These changes, once becoming law, will bring the Israeli ornamental design regime in line with other jurisdictions, including Europe and the USA.
Although design protection is not available for solely functional aspects of a product, it is possible and even advisable to protect the aesthetic and ornamental features of products' functional components. As in other countries, in recent years, Israel allows protection of digital icons and graphical user interfaces (GUI).
For the time being, until the Bill becomes law, the novelty requirement is as prescribed by the 1924 Patents and Design Ordinance, which is local novelty. However, the Registrar's directives, several years ago, extended the scope of novelty-destroying publications in Israel, notwithstanding the local novelty requirements, to any publication available via the Internet, which requires evidence of the date of online publication. Prior publication is broadly interpreted as selling, marketing and other forms of public or on-line disclosure.
The Industrial designs are currently protected for a period of five years which can be renewed twice for a total of 15 years of protection. In the Bill, this period is extended to a total period of 25 years.
In China, designs are eligible for patent protection under the Patent Law of the People’s Republic of China; but, unlike utility patents, Chinese design patents are not subject to substantive examination. If the application meets the required formalities and applicant has paid the filing fee, then a patent will typically issue within six to twelve months. Design patents are valid for a period of 10 years from the date of registration.
Under the European Union Designs Regulation and Designs Directive, designs may be registered with effect throughout the entire European Union (EU) through the Office for Harmonization in the Internal Market (OHIM), located in Spain, which will shortly change its name to "European Union Intellectual Property Office".
The European Community Designs Regulation and Designs Directive provide for the most progressive form of design protection in the world. For one, protection is afforded for a period of five years with the option of 4 consecutive extensions of 5 years (subject to a fee), yielding protection for a total term of 25 years.
The EU design regime also provides a twelve-month grace period from first public disclosure of the design and exhibit of a product bearing the design in a fair or an exhibition to ascertain its market value. The aforesaid circumstances would bar registration in many countries, but not in the EU, provided filing in Europe is within said 1 year period.
Design protection is provided for the appearance of the whole or part of a product which may arise out of the lines, contours, shape, texture, ornamentation of the product, even its color, the inside of the product, as well as a product's spare parts. Graphic symbols such as a computer icon or even a typeface are among products that may be protected.
Like design patents in China, European community designs are not subject to examination. However, in order to be enforceable, designs must meet the requirements of both novelty and “individual character.” The “individual character” requirement focuses on whether the applied-for design would create a distinct impression on an “informed user” familiar with designs in the relevant field when compared to the prior art.
The EU Design Regulations also recognize unregistered designs for which protection is available for up to three years, following their public disclosure, with few exceptions in some individual EU countries which allow for longer periods to seek protection. It is important to note that unlike registered designs, the protection afforded by an unregistered design, allows the owner to prevent unauthorised copying of the design. This places a very heavy burden of proof on the owner of the unregistered design.
Japan is among the countries where registration of designs undergoes substantive examination. The registration requirements include both industrial utility and novelty (“innovative and without precedent” in the word of the law), as well as meeting various other standard requirements. While disclosure, prior to publication, will generally bar registration, the law in Japan recognizes a six-month grace period from the date of owner's public disclosure.
Japanese design patents are registered for a 20-year term from the date of registration with no option for renewal.
The Japanese law also recognizes unregistered designs that are eligible for protection, within three years of its first sale in Japan.
Designs are also eligible for design patent protection in the United States. As in Japan, U.S. design patent applications are subject to examination for novelty and other standard requirements. Once granted by the United States Patent and Trademark Office (USPTO), a U.S. design patent registration is valid for 15 years.*
The United States is one jurisdiction, in particular, where design patents have seen a recent surge in popularity. Thanks to the minimal hurdles to registration – including a new expedited filing process – companies in the U.S. and abroad are increasingly seeking design registrations for use as both defensive and offensive tools to fight unfair competition. Among the reasons for its popularity is also the ease of litigation and the low costs of enforcement of the design patent rights when seeking legal, injunctive, and declaratory relief. While in a utility patent case, the burdens and obstacles facing the patent owner are often difficult and expensive to deal with, with design patents, the task is much easier as decisions made are based on an "eye test", where appearance of the allegedly infringing product or a part thereof is compared with the illustrations in the design patent, typically devoid of any technical analysis of methods of manufacturing, materials, colors or slight deviations in the products outer appearance. "What you see is what you get", is the common adage in this respect.
*The United States became a signatory to the Hague Agreement on May 13, 2015, triggering adoption of a 15-year term for design patents. Designs registered under applications filed before May 13, 2015 have a 14-year term.
Seeking design protection is an important measure for protecting ornamental or aesthetic features that are proprietary, albeit non-functional aspects of innovative products. Designers and companies seeking to enter international markets should carefully weigh the option of obtaining design protection of design aspects of their products, which may occasionally provide an important proprietary position and hence a critical entry barrier to competitors. In weighing this option, careful consideration should be given to obtaining the broadest protection in a cost effective manner through a carefully thought out strategy, bearing in mind the intricacies of the design regime, in the target jurisdiction. Although registration can be a simple and effective tool for protecting industrial designs, it is critically important to choose an adequate strategy prior to beginning the application process. This strategy should take into account the date of disclosure of the design, the desired scope of protection, the countries and regions in which the design should be protected, the costs of filing, and a number of other factors.
Finally, to avoid the risk of being unable to seek protection in Israel or other countries, it is advisable to consult with a professional patent attorney or attorney at law before publicly disclosing a new design.