Designing foreign applications

The importance of industrial design to Australian businesses is increasing, with competitive advantage being gained by investment in innovative design. Many Australian companies are now looking to sell their products outside of Australia, making the protection of designs in foreign countries of greater interest than it has ever been.

The lack of harmonisation of design registration practices around the World can mean that seeking protection overseas is like traversing a minefield. Attempting to roll out the same filing approach in each jurisdiction inevitably leads to compromises in scope or certainty of protection, and increased cost to applicants.

This article discusses some common issues that arise when filing foreign design applications. Whilst your foreign attorney will lead you through the process from filing to registration, the application of some strategic thought around these issues early in the application process, and preferably at the time of preparing the priority document can pre-empt problems that may only otherwise surface once a foreign design application is filed or under prosecution.

Has there been prior public disclosure?

Public disclosure of a design before first filing a design application will prevent an applicant from obtaining valid design protection in Australia. However, many foreign countries offer a “grace period”, whereby the applicant’s own earlier public disclosure may not be considered to invalidate a design registration. These grace periods usually require the applicant to make their application within a defined time period after the first disclosure to have their prior disclosure excused.  So if you (or, if you are a practitioner, your client) have already disclosed the design before filing, all may not be lost.

The United States, Canada and many other North American countries offer a 12 month grace period in which to file a design application following the applicant’s own disclosure of the design to the public. There are a number of South American countries that also offer either a 6 or 12 month grace period, such as Brazil (6 months).

Japan offers a 6 month grace period, however details of the disclosure must be provided by the applicant upon filing the application. Taiwan, South Korea and South Africa also provide a 6 month grace period.

Unfortunately, China does not offer a grace period. Neither do many Southeast Asian countries with notable exceptions being The Philippines and Indonesia that offer 6 month grace periods, and Cambodia that offers a 12 month grace period.

The European Union offers a 12 month grace period for registered designs, and if things have gone really awry the European Unregistered Design Right might still offer some protection. Switzerland, which is not part of the European Union, or the Community Design system, also offers a 12 month grace period.

Can you file more than one design in an application?

There is very little consistency between countries as to how design applications with multiple designs or design variations are treated in terms of process and cost. Furthermore, as each country has different practice when it comes to deciding what constitutes a “similar design” and what is allowable in a single design application, it is best practice to seek advice from a local attorney in each country of interest. In some countries it can be beneficial to file multiple designs in the one application and divide them into separate applications at a later stage. In other jurisdictions the reverse is true.

Despite the European Union treating each variation shown in the drawings of a design application as an entirely separate design, the Community Design system is very flexible and cost effective for protecting multiple designs. This is largely because they apply a decreasing fee scale for multiple designs, and allow an unlimited number of individual designs to be filed in the one Community Design application, as long as each design belongs to the same Locarno Classification. Practically speaking, however, if the application is filed online, only 99 designs can be filed in the one application. It is also worth noting that only the first 7 views of each design are considered to be part of the registration.

China has two different systems for multiple designs. The first allows an unlimited number of designs to be included in one application where the designs are incorporated into products which belong to the same classification and are usually sold and used together in sets, for example a lounge suite and an armchair. The second system allows you to file up to 10 designs in the one application if they are considered “similar” designs. This requires the applicant to designate a main design and the subsequent designs are “affiliated” designs that must share the same core design elements as the main design. This can be used to protect multiple versions of the same core design, e.g. products with the same product silhouette but having a different number of a particular element, for example a car headlight assembly of the same external shape that has versions with 2 lights, or 4 lights or 6 lights. The official fee is the same for an application no matter how many designs are included in the application. Chinese agents tend to apply a decreasing service fee scale for multiple designs. A somewhat similar practice to China applies in Japan.

In the United States you can file multiple designs in the one application, however they may not all ultimately be granted in the one design patent. This often means that the applicant is forced into filing one or more divisional applications to protect all of the designs illustrated in an application. To be maintained in the one design patent, the designs or embodiments must be “patentably indistinct”, effectively meaning that they can only have minor differences that are not visually significant.

Careful consideration should be given to the original United States filing strategy for multiple designs in consultation with your United States agent since in some circumstances deleting a design during examination may mean that the deleted design is excluded from protection by the designs remaining in the application; if no divisional or continuation application is filed for the deleted design it is “surrendered”.

Are partial designs protectable?

In many cases, there may be a particular feature, or combinations of features, of an article that make it distinctive or appealing to competitors to copy. These designs can be protected in a number of countries, using “partial designs”. A partial design is a design registration directed to only a part of an article, for example a unique handle of a coffee cup. To infringe these designs only the handle of the allegedly infringing coffee cup must fall within the scope of protection, with the remainder of the coffee cup being disregarded. In other countries (e.g. Australia), protection of parts of products is more difficult because the overall appearance of the design is the key factor in determining the scope of registration.

Whilst broken lines are routinely used to “de-emphasise” elements in Australian design applications, in some countries equivalently drawn broken lines are used to “disclaim” those elements of the design. In the United States and the European Union those portions of the design shown in broken or dashed lines generally do not constitute part of the protected design and thus are not taken into consideration when assessing novelty or infringement. It is therefore possible to protect multiple versions of one design, each “claiming” different parts of the product, by using solid and broken lines in different ways.

In China, broken lines are not allowed to be used in the drawings.

Japan also allows the use of broken lines to disclaim portions of a design. However, Japan requires that the drawings filed in Japan are identical to a set of drawings filed in the priority document.  Japan also has quite specific rules for how broken lines are illustrated.

As a result of these different requirements it may be necessary to consider filing extra drawings in the priority application, just to ensure that you can validly claim convention priority later in each country of interest.

Can publication be delayed?

Publication of a design is likely to occur relatively quickly in most countries. Australia is a case in point, where registration and publication can occur less than a month after filing. This gives you little scope to control publication of your design, which applicant’s may want to do so as to maintain secrecy prior to product launch.

Some jurisdictions, however, have formal mechanisms for delaying publication of a design application. In the European Union, publication can be delayed for 30 months from the priority date upon request. In Japan there is an option to request that the design be kept secret for a period of up to 3 years from the date of registration. In the United States, this is less of an issue, since design applications are not published until they are granted.

Will the design application undergo substantive examination?

Most countries do not undertake substantive examination of a design application and they are only assessed in relation to formal matters. Of the countries that do conduct routine substantive examination, worth noting are the United States, Canada, Japan, New Zealand, Taiwan and Thailand, with the United States being the most rigorous. Applications filed in China will not be automatically examined, but the examiner may, at their discretion, conduct a prior art search; typically this appears to be limited to the Chinese designs database.

Whilst applications filed with the European Union will not be substantively examined, if an application is filed directly with a member state, it may be examined, as many of the local laws include substantive examination.

How long will protection last?

There is very little consistency around the duration of design protection offered around the World. Whilst signatories to The Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) must offer a minimum 15 year term, many other countries (Australia included) only offer a 10 year term. Outlined below are the terms offered in some key countries.