Filing Design Patent Applications in China and Taiwan

When filing design patent applications in China and Taiwan, the practitioner should be aware of unique filing requirements and potential pitfalls she may encounter when filing such applications, especially concerning the drawings. I just finished prosecuting several applications for various clients in China and Taiwan, and I thought this may be a good opportunity to review drawing filing requirements in these countries of growing importance.

In the United States, the rules are somewhat less strict with respect to multiple embodiments, shading and hidden features. When prosecuting a U.S. application, I have taken the approach of including all embodiments within a single application, with the hope that the USPTO will examine all embodiments. As far as representing the claimed design, I like to show all features, with solid lines illustrating “must have” components of the design and dashed lines illustrating non-essential components. Anyone who prepares and prosecutes a fair number of designs patent applications knows that it is not easy to decide what design elements are important (represented by solid lines) and unimportant (represented by broken lines or even deleted). With shading, I usually leave it to my draftsman, who does a nice job representing the surfaces of the claimed design.

In China, the practitioner needs to be aware that the Chinese Patent Office will require drawings without shading and broken lines. The elimination of shading and broken lines may impact decisions made during the U.S. filing. For example, rather than representing non-essential components with broken lines, perhaps it is a better practice to eliminate non-essential components totally. However, I am reluctant to adopt this approach since the claimed design may not be accurately represented. Regarding multiple embodiments, China adopts the same practice as the U.S. – the practitioner may file one or more divisional applications. I find consultation with my respective counterparts in each country to be the best tool for determining when the divisional application must be filed.

In Taiwan, while allowing shading and broken lines, the Taiwanese Patent Office requires that all embodiments must be represented in separate applications. Thus, when claiming priority to a U.S. application, for example, the practitioner needs to be aware that a multiple embodiment application needs to be broken into separate applications prior to filing. This may prove difficult when waiting until the last minute to file.

Prior planning can make it significantly easier for the practitioner when filing design patent applications in China and Taiwan. What has your experience been?

Beach and Summer Designs

First RCD Decision Issued by the European General Court

In overturning a lower court decision, the ECG (European General Court) provides useful guidance on the interpretation of definitions and concepts in European Community Design Law. In particular, the ECG weighed in for the first time on whether a particular Registered Community Design (“RCD”) is in conflict with another previously registered design. Some basic information on Registered Community Design can be found here.

PepsiCo, Inc. owns the RCD shown below (left):



PepsiCo’s design was filed on September 9, 2003, and claims priority to a Spanish registration filed on July 23, 2003. The design was classified as a “Promotional Item for Games.” The owner of an earlier filed (July 17, 2003 with a Spanish priority claim of July 8, 2003), but later published design, Grupo Promer Mon Graphis SA (‘Grupo’) (above -right), requested that PepsiCo’s registration be cancelled. Grupo argued that PepsiCo’s registration was done in bad faith, as Grupo had disclosed their designs to PepsiCo in confidence and that the two designs were “in conflict.”

The ECG reviewed the first determination by the Office for Harmonization in the Internal Market (OHIM) that the PepsiCo’s registration was “in conflict” with Grupo’s earlier RCD, and its subsequent reversal by the OHIM Board of Appeal. The Board had rejected Grupo’s bad faith argument and reversed the OHIM determination that the designs were in conflict.

The ECG agreed with the Board on the determination of bad faith. The ECG found that bad faith was not a valid ground for determining invalidity based on the Regulation governing RCDs. (The Regulations can be found here). However, the ECG disagreed with the Board’s ultimate decision that the two designs were not in conflict. As the Board set forth, and the ECG agreed, a design is in conflict if it produces the same overall impression on an informed user, taking into account the freedom of the designer in producing the design. The approach seems quite similar to the “Ordinary Observer” test used in the U.S.

The ECG opined on the degree of freedom of the designer, which deemphasizes common features of a design where the degree of freedom of the designer is limited, almost akin to the US approach of ignoring functional features of a design. Although recognizing that in the narrow category of “pogs,” “rappers,” or “tazos” the degree of design freedom is severely limited, the ECG still determined that the difference between PepsiCo’s and Grupo’s designs were not sufficient to produce a different overall impression.

Rather than the current approach of filtering out functional elements, perhaps the U.S. approach could benefit from consideration of “degree of freedom” when applying the Ordinary Observer test. It seems the approach of deemphasizing common elements rather than outright exclusion of elements could alleviate some of the criticism of the recent Stanley decision (analyzed here).

Designs of the Week

Statue

Weenie and marshmallow roaster

Kiosk

Toothbrush

Any guesses as to what this is?

Design Patent Relationships with Other Forms of IP Protection

Design patents protect the new and original ornamental characteristics embodied in, or applied to, an article of manufacture. Although the protection offered by a design patent is somewhat limited, recent decisions such as Crocs, Inc. v. International Trade Comm’n. and Egyptian Goddess, Inc. v. Swisa, Inc. have bolstered the ability of patent owners to prevent others from making, using, or selling products that closely resemble the patented design. This form of protection can be especially valuable for products that have achieved commercial success and widespread consumer recognition, and are thus more susceptible to imitation. A design patent can represent one facet of a multi-faceted approach to guarding your IP. Therefore, it is worth considering the interplay between design patents and other types of protection.

Copyright

One area of overlap exists between design patents and copyrights. The ornamental design of a product may also be a copyrightable work of art, and such a copyright can coexist with a design patent. Furthermore, section 1301 of the copyright statute explicitly states that “the designer or other owner of an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public may secure the protection provided by [the copyright statute].” While that sounds intriguing, Congress has thus far limited the scope of “useful articles” to designs of vessel hulls and decks, though there have been efforts to expand copyright to other types of articles, such as fashion designs for clothing, handbags, belts and eyeglasses. A discussion of what constitutes an “original design” is beyond the scope of this article, but it is generally defined as any distinguishable, non-trivial variation over a prior work of art. Furthermore, neither copyright nor design patent protection extends to designs that are dictated solely by a utilitarian function. Also excluded from section 1301 are illustrations that are not embodied in an article, such as drawings, photographs, brochures, etc. Copyright for a design of a useful article begins upon registration with the U.S. Copyright Office and expires after about ten years, whereas a design patent becomes effective after examination and issuance, and is valid for a term of 14 years from grant.

Several important distinctions occur with respect to infringement of copyright. It is an infringing act to make, use or sell an article embodying a copyrighted design; however, infringement only occurs when the infringer had knowledge that the design was copyrighted. This mirrors other aspects of copyright law, where “copying” is the key to proving infringement. The mere coincidence that two articles share the same design is not enough. In this regard, design patents offer a more powerful form of protection because, once the patent issues, the world is placed on notice that the design is patented, and the lack of knowledge of an infringer is not a defense to infringement. Another notable distinction is that the Copyright Office does not assess the originality of a design before issuing a Copyright registration. Therefore, a copyright owner has the burden of establishing the originality of a design during litigation. Nonetheless, an applicant for a design patent need not choose between having either the patent or a copyright, because both can work in harmony to protect the same design. Additionally, the USPTO will allow the inclusion of a statutory copyright notice within the design patent.

Trademark

Design patents may also overlap with trademarks, which can be used to associate a design with a unique source and also to exclude imitators and free-riders. In fact, a design patent and a trademark can exist for the same article. Design patents and trademarks coexist peacefully because the rights acquired from each are neither dependent nor conditioned upon the other. Trademarks for designs which are in continuous use may be valid indefinitely. As with copyright, the USPTO allows trademark notices to appear in a design patent as long as the trademark is in legal use under federal trademark law.

Utility Patents

Not to be discounted is the relationship between design patents and utility patents. While each type of patent serves a different purpose, some inventions may qualify for both types. However, care must be taken to avoid a situation where one patent anticipates the other (i.e., the design is no longer novel in light of its disclosure in an earlier patent). For example, if a utility patent or patent application includes drawings showing potentially patentable ornamental designs of the invention, those drawings could become prior art that would lead to a rejection of a design patent application claiming the same design. This is an important consideration for applicants who may initially be focused on a traditional utility application, and then later (perhaps after achieving some success with the product) decide that the invention’s design is also quite valuable. While copyright and trademark may still provide avenues to pursue copycats, the relative inexpense of acquiring a design patent and the concomitant benefits (e.g., injunctions and damages) may counsel toward filing both utility and design patents for the same invention in situations where the ornamental design of the invention is unique.

One method of preserving rights across multiple patents is to utilize the statutory right to claim the benefit of an earlier filing date of another patent application. Design patents may claim priority to utility patents, and vice versa. However, a design patent may not claim priority to a provisional utility patent application (and there is no such thing as a provisional design patent application). As with utility patents, the design patent application must be filed during the pendency of any U.S. utility application to which it claims priority.

Conclusion

The USPTO processes more than 25,000 design patent applications per year, but this number is a drop in the bucket compared to utility patent and trademark applications, as well as an unknown but presumably huge number of copyrighted designs that are constantly being created. This suggests that many are not taking advantage of the opportunity to diversify their IP protection by considering design patents.

A food storage container having both a utility patent (top) and a design patent (bottom).

Designs of the Week

From the Official Gazette for the week of June 1, 2010:

X6D Seeing Red Over Alleged Design Infringement of 3-D Glasses

X6D Ltd. v. Li-Tek Corp.
Civil Action No. 2:10-cv-02327 (C.D. Calif., filed Mar. 30, 2010)

In March of this year, X6D Limited filed a lawsuit alleging, among other things, infringement of its patent on the design of 3-D glasses. The design patent at issue is U.S. Patent No. D603,445 (“the ‘445 patent”), which issued on November 3, 2009. In particular, X6D has alleged that certain 3D glasses sold by Li-Tek Corporation and GDC Technology infringe the `445 patent.

Under Egyptian Goddess, a court tasked with determining whether a design patent has been infringed must apply the Ordinary Observer test, which simply asks whether an ordinary observer (that is, a layperson who is familiar with the prior art) would be deceived into thinking that the infringing product is the same as the patented design.

This case is still in the very early stages, and in fact an answer has not yet been filed by the defendants. However, I thought it would be a useful exercise to take a first look at the patent, the prior art, and the accused products to see how a court applying the Ordinary Observer test might decide the issue of infringement.

The prior art
An ordinary observer would be familiar with the following art, taken from utility and design patents listed on the face of the `445 patent. These designs include both 3-D glasses and sunglasses:

Though this is clearly not an exhaustive survey of the field, you get the sense that 3-D glasses started out resembling scuba masks, and are evolving to look more like sunglasses.

The `445 patent
The following figures are from the `445 patent:



Looking at these figures, a few design features jump out at me:

The arms: Viewed from the side, the arms are almost totally horizontal (i.e., they do not wrap down around the wearer’s ear). They also have 3 or 4 vertical notches about halfway down the arm. Viewed from above, each arm curves inwardly twice, creating a rough “3” shape for the right arm (as seen above). The portion that goes next to the wearer’s temples appears thick and bulky.

The face/lens portion: The front of the glasses are flat, in that they do not wrap around the wearer’s head. The part of the frame that retains the lenses appears thick and bulky, and also appears to be unitary with the “temple portion” of the arms described above. Viewed from the side, the front of the frames and lenses form an unbroken, nearly vertical line.

However, the Supreme Court warned in Egyptian Goddess that a “points of novelty” checklist is not the way to determine infringement. Therefore, it would be improper to review one-by-one those items listed above to determine what aspects of the design are novel and deserving of protection. Rather, the recent Crocs v. ITC decision (Ordinarily Observed here) shows the approach courts are most likely to follow for design patent infringement. Under that approach, we must perform a side-by-side comparison of the patented design and the alleged infringing design—all in view of the prior art—to see if the accused products embody the overall effect of the `445 patent.

To do the comparison, we must determine the “overall effect” of the `445 patent, perhaps by generalizing the visual effects of the elements listed above. When viewed from the side, the design is made up of clean, straight lines: the straight horizontal arms, which widen and terminate abruptly at the flat front of the glasses. When viewed from above, the inwardly-swooping arms draw attention away from the flat front of the glasses.

To summarize, the lines of the design curve very little through the vertical plane, whereas they swoop inwardly through the horizontal plane.

The allegedly infringing product
Now we consider the allegedly infringing glasses, some of which I found on a defendant’s website:




There are some obvious differences. The first two accused designs shown appear to have a wrapping, non-flat front. Furthermore, in those designs the arms swoop downwardly.

In the third accused design, the arms are generally horizontal, like the arms in the `445 patent. However, other aspects of the third accused design are markedly different, for example, the downward curve above the bridge of the nose, and the rounded sides of the temple piece.

But there are also some similarities. The lenses of the first two accused designs appear to be the same shape as the lenses of the `445 patent. The wide portion of the arm near the temple is wide and bulky, as in the `445 patent. However, this may be a functional aspect of the design, in that the enlarged structure may be necessary to house electrical components.

Functional elements of a design are the sole province of utility patents, not design patents, and therefore receive no protection under the latter. Thus, the general concept of a “bulky arm” in the `445 patent would probably be entitled to little or no protection if it were bulky for functional reasons.

One similarity that jumps out is the notches visible in the arm pieces of the first two accused designs. They appear identical to ones in the `445 patent! Since the notches appear to be for aesthetic purposes only, this could weigh in favor of a finding of infringement. Though the court must look at the “overall effect” of the design, a slavish copy of a purely aesthetic design detail will not go unnoticed.

Conclusion
Though this is far from a clear-cut case, I’d say the third accused design is probably not infringing. Other than the straight arms, which are hardly novel in the field of glasses generally, there are substantial differences.

It’s a closer call on the first two accused designs. They may depart somewhat from the overall effect of the `445 patent. However, the shape of the lenses, the bulky front/face portion, and the vertical notches may be enough to tip the scales in favor of infringement. That said, I did not examine all the prior art, did not look at all of the accused devices, and have no information on the functionality of various aspects of the designs.

And of course, the parties may argue for, and the court may adopt, a description of the “overall effect” that is wildly different than the one I came up with. I guess what I’m saying is: infringement is in the eye of the beholder, making the streamlined Ordinary Observer test as difficult to predict as its predecessor.