Industrial design (or design patent) registration is crucial for protecting the appearance of a product and preventing others from copying or imitating it. However, the process of registering an industrial design can be complex and time-consuming, especially for those who are not familiar with the legal requirements and procedures involved.
In this comprehensive guide, we will walk you through the entire process of design patent registration, from the initial application to the maintenance of the registration, and provide you with practical tips and insights to help you navigate this process successfully.
Please note that you should not confuse a design patent with a utility patent (invention patent), read our article about utility patent registration.
1. Crucial points about the design patent registration process
2. The most important thing in the design patent registration process – Drafting
3. The easiest step of the design patent registration process – Filing
4. The longest step of the design patent registration process – Examination
5. Last steps of the design patent registration process – Granting
6. Obtaining a design patent in several countries
Below are some crucial points you need to know about design patent registration before you start:
- Industrial design protects the appearance of a product. The product can be an industrial unit or rocket, as well as a candy package or a poster. Appearance includes shape, configuration, ornamentation, combination of colors, lines, product contours, texture, or material finish.
- A patent is issued for the design. It gives a monopoly right to the manufacture and sale of the goods in which the patent is used.
- The term of a patent is 10-25 years depending on the country.
- The scope of rights is determined based on the images of the industrial design.
- The design must be new and original. In order to meet the criterion of “novelty” it is necessary that such product has not been published anywhere before the date of filing the application. The originality means the creative character (not a partial copying of already existing products, but an independent development, introduction of new elements).
- The main stages of industrial design registration are: registration of the application (images + description, in some countries only images); submission of the application to the Patent Office, examination of the application and responding to the expert’s questions (if any), registration of the patent, maintenance.
- If the product is produced in different colors or as part of a set, it is possible to apply for a group of industrial designs.
- Design patents have a territorial principle of action. If it is to be protected in another country, an application must be filed with the office of that particular country.
- There is no single international patent, but it is possible to file a single application in several countries. This is done under the Hague procedure for the registration of industrial designs. It is not necessary to have a basic application/design for the Hague one.
- The right holder of the patent can be a natural person or a legal entity, while the designer can only be a natural person. The number of designers and right holders is not limited.
- Foreign applicants can interact with the patent office only through local patent attorneys.
- The registration period varies from 1 month (Europe) to 2 years (Egypt) depending on the country.
- The legal protection of a design patent, like any other patent, begins on the date of filing the application for registration (provisional legal protection). As long as the application is pending examination and there is no patent itself, the applicant has the possibility to sue infringers for the filed application.
The most important thing in design patent registration is the creation of a basic application:
- First, it is necessary to conduct a patentability search. The search is carried out using both international databases of registered industrial designs and open sources (e.g. Google, Google Images). The search is crucial to find out whether the claimed product is new and original, i.e. whether it has not already been created by someone else and is not just an aggregation of already known products or parts of them. For example, if, when designing a table, the appearance of the tabletop is borrowed from an Ikea table, and the appearance of the legs is derived from a chair published on Amazon, then the product would not be original.
- Since the amount of rights will be determined by the images presented, they should be made clearly, with distinct boundaries, on a neutral background, without extraneous objects, explanatory inscriptions, arrows, or break designations.
- Most often, the maximum number of images is seven. For a complete understanding of the product, it is best to provide views of the product from the front, back, side, top and bottom (for a flat product, one image is enough).
- Several versions of the same design can be included in one application, such as, for example, one nail gun in different color versions. It is important to bear in mind that the variants should only differ in minor elements.
- A single design could also be a set of anything. For instance, a set of tableware or a furniture set.
- When registering several versions of a product or a set of designs, each product in the group of designs should be represented by a separate set of images in all the required views.
- Registration costs can be substantial, ranging from $200 to $2500. To minimize costs, a search can be done with the help of patent attorneys in your country, as it is done using all available sources in the world.
Once the basic application is ready, it can be filed for design patent registration:
- Filing includes preparing an application (usually electronically) and a power of attorney, as well as paying govt fees. At this stage, you can choose the cheapest offer possible, as long as the attorney is certified.
- If you apply for priority (according to the earlier application filed in the country-party to the Paris Convention or the exhibition priority), you are required to submit the certified copies of priority application with translation into the language of the patent office. Priority can be claimed within 6 months from the date of filing of the first application or publication at the international exhibition.
- In general, the application process is the same in all countries. In some countries, slightly more documents are required, in others slightly less (for example, a power of attorney or a description is not required). Most commonly, the application is submitted in the official language of the country of submission. At the European Office it is possible to file an application in any language of a member state of the European Union.
- When filing the Hague application, a brief description of the appearance of the product is sufficient. The description should contain the purpose and scope of application, analogues and a prototype, disclosure of the essence of the industrial design. Each country sets its own criteria for patentability. For example, in China, the Office does not conduct a novelty and originality test (although these criteria are prescribed in the law). In Vietnam, industrial applicability is also considered, i.e. the design can be used as a design for mass production.
- In addition to these criteria, the examiner looks to ensure that the claimed product is not contrary to morality, public interest, religion and ethics; is not solely due to technical functions; is not an unstable form of liquid, gaseous, free-flowing or similar substances.
- In most countries, the novelty exemption for an industrial design is 12 months. This means that after an application has been filed in one country, applications for a similar product can be filed in other countries within a year. After this period, the application will not pass the novelty test. The novelty examination is not carried out by all offices. However, even if the design is registered, third parties may challenge the registration later.
- The cost of registration consists of the services of a patent agent, the state filing fee and the state fee for the registration of the design; additional fees may also be charged for examination, publication and priority claiming. In many countries there are discounts on fees of up to 75% for applicants who are individuals or small businesses. The cost of services depends on the provider.
- It is preferable to apply through local patent attorneys. Of course, sometimes it is more convenient to work with one company and apply to Europe, USA and Australia through European patent attorneys, but the cost of services in this case will be much higher than when working directly with American or Australian attorneys.
The iPNOTE directory features more than 700 patent firms from 135 countries, so you can always find the right direct vendor using our flexible filtering system. Take a look at our directory of patent attorneys.
When the design patent application has been filed, the examination begins:
- Each patent office conducts its own examination, so successful design patent registration in one country does not guarantee registration in another.
- In all countries, the application undergoes a formal examination, during which the accuracy of filling out the application, availability of the necessary documents, and payment of the fee are checked. Some countries provide for substantive examination, where the subject matter is checked for compliance with the patentability criteria.
- If during the examination the examiner has any questions, he/she sends a request (Office Action). The response to the request is limited in time, and each office has its own deadlines. The grounds for the request may be the need for a simple correction of the name, or lack of novelty. Since patent offices do not work directly with foreign applicants, it is necessary to appoint a local patent attorney to prepare and file a response to the request, which entails additional costs. At this stage, it is worth taking a closer look at the choice of a right attorney.
- Some offices may send multiple requests if they are not satisfied with the initial response, while others will refuse in design patent registration after the first one.
- If patent attorneys take a long time to answer, cannot explain the essence of the request in simple language, do not know how to prepare an answer, or don’t meet the deadline, it is worth considering changing representatives.
After a successful examination, a design patent is granted and must then be maintained at regular intervals:
- The procedure for granting a design patent is also formal and includes the payment of registration fees.
- However, not all countries have such a fee. For example, in Europe and India there is no registration fee, in China there is a very small fee for the patent certificate itself, and in Kazakhstan and Egypt there is a standard fee which is paid after the notification of the registration is sent to the applicant.
- In some countries, paper patents have been completely replaced by electronic ones. In addition, when registering under the Hague system, no design patent is issued, only the Decision on Design Patent Registration is sent.
- In most countries, the patent must be maintained. To do this, the maintenance fee must be paid within the last few months of the patent’s validity. If the deadline is missed, the owner usually has another 6 months to pay the fee at an increased rate (in this case, along with the payment of the fee a statement is submitted). In some countries maintenance is paid annually (China or Uzbekistan), in some countries it’s paid once in several years (every 5 years in Europe).
If you plan to obtain a design patent in several countries, it is worth remembering the following:
- You can file directly with a particular patent office through local patent attorneys (one application, one country) or you can file one Hague application to include several countries at once.
- As of early 2023, 77 countries and alliances can be filed under the Hague system.
- Filing the Hague application is most often more advantageous, as it saves on fees.
- The application is filed to WIPO, which conducts a formal examination and forwards the application to the specified countries (at the stage of formal examination, the applicant can answer the queries of WIPO). After that, each patent office conducts its own independent examination (if it is foreseen).
- The publication takes place 6 months from the date of the international registration, unless the applicant has requested immediate publication or postponement of publication.
- The Hague application can be filed including the applicant’s country of origin.
- It is not possible to add new countries to the Hague application.
- If several national applications are submitted, it is necessary to meet the one year deadline. Otherwise, it may be rejected on the grounds of lack of novelty.
- When submitting the Hague application, a brief (up to 100 words, otherwise an extra fee is paid) should be attached. One application may contain up to 100 versions (up to 100 articles in the Designs Group).
- If design patent registration in European countries is required, it is easier and cheaper to file a European application (or The Hague application with indication of the European Union). The European Union includes 27 countries. A design patent has equal validity throughout the European Union. It cannot be transferred or invalidated except with respect to the entire European Union.
- Similarly, one application can be filed with OAPI (African Intellectual Property Organization), which includes 17 countries.
Design patent registration is an essential step in protecting a product’s unique features in domestic and foreign markets. The process can seem overwhelming at first, but with the right guidance, it can be accomplished with ease.
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