Tech Transfer News: US Ratifies Hague Agreement
On February 13, 2015, the United States Patent and Trademark Office (“USPTO”) announced that the United States (“US”) had deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) with the World Intellectual Property Organization (“WIPO”). 1 This was the final step to becoming a contracting country under the 1999 provisions and will allow US applicants to seek protection for industrial designs in multiple countries with a single international application. This article will discuss briefly the importance of protecting industrial designs, the type of protections available in the US with a focus on design patents, and the changes that the Hague Agreement brings.
I. INDUSTRIAL DESIGNS
A. What is an Industrial Design?
The term “industrial design” refers to the design of an “article of manufacture.” In other words, it is the visual characteristics of a man or machine made object that possesses characteristics distinct from its raw materials. These characteristics can be two-dimensional, such as patterns and colors, three-dimensional, such as shapes and textures, or some combination thereof. The figures below illustrate the differences.
B. Why are Industrial Designs Protected?
Many reasons for protecting industrial designs are congruent with those traditionally underlying patent, copyright and trademark regimes. At the heart of the US patent and copyright system is the constitutional mandate “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Although protecting industrial designs may not generally be perceived as “promoting the progress of science and useful arts,” the US Supreme Court has observed that “giving new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public.” Accordingly, the US will grant a period of exclusivity (i.e., protection) to incentivize designers, provided that, in exchange, the designs become public knowledge.
Similarly, by granting certain industrial designs trademark-like status, the US can protect the consuming public’s purchase expectations regarding a product’s quality or an associated company’s goodwill based on the product’s appearance and/or inclusion of a specific design. Marks or designs that are “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [a designer/company] with another [designer/company]” by a customer are discouraged via trademark infringement suits.
II. PROTECTING INDUSTRIAL DESIGNS IN THE US
Unlike designers in other countries who may rely on laws specifically crafted for industrial designs, US designers must rely on, alone or in some combination, the protections afforded under patent, copyright and/or trademark law. 2 This section will discuss how industrial designs are protected under the US patent system and will briefly discuss protection under US copyright and trademark law.
A. Design Patents
Protecting the ornamental or artistic characteristics of an article of manufacture under the patent system—a system generally reserved for utilitarian characteristics—may strike some as odd. 3 Still, the US patent system offers inventors a means of protecting not only how their articles are used and work (utility patents) but also how they appear (design patents). Accordingly, anyone who creates a new, original, non-obvious and ornamental design for an article of manufacture may obtain patent protection.
A design is considered new or novel if, in the eyes of an ordinary observer, the design is different from any prior designs. Prior designs include those that have appeared in patents, patent applications, or printed publications or that are in public use, on sale or otherwise available to the public. The hypothetical observer must see the design as truly different, and not merely modified, from an already-existing design. Small changes in detail are not enough. For example, the Federal Circuit determined that an ordinary observer would not view Figure 4 (patented design) and Figure 5 (infringing design) as different designs.
Unlike utility inventions, patentable designs must be “original.” A design is likely to be original so long as it does not simulate “a well-known or naturally occurring object or person.” Although, “reassembling or regrouping of familiar forms and decorations” is permissible. This is generally an easy requirement to meet since judges have set the “originality” bar fairly low. The term seems to simply mean: “of the author/inventor.”
A patentable design must also be “nonobvious.” While this is consistent with awarding patent protection to inventive processes/items (utility patents), many have questioned its application to creative items (design patents). Nonetheless, the patent statutes do not provide for any special application or exclusion of this requirement. Accordingly, a design is considered obvious, and therefore non-patentable, if a designer of “ordinary skill would have combined teachings of the prior art to create the same overall visual appearance as the claimed design.” This involves identifying “something in existence” with characteristics, “which are basically the same as the claimed design” and determining whether they both convey “basically the same visual impression.” Then identifying secondary characteristics wherein “the appearance of certain ornamental features in one would suggest the application of those features to the other.” If there are such suggestions, then the design is likely obvious. However, like utility patent inquiries, a design is more likely nonobvious if there is evidence that the design itself is commercially successful, solves a long-felt need, or succeeded where others failed. For example, a design is more likely nonobvious if its commercial success is attributable to the design and not its brand name or the item’s function.
Finally, a design must be “ornamental.” In other words, the design cannot be dictated solely by the article’s function. For example, a key blade’s design is functional, because it “must be designed in order to perform its intended function—to fit into its corresponding lock’s keyway.” This does not mean that the design cannot contain functional elements, so long as the claim identifies the non-functional design aspects. Unfortunately, the case law does not provide a consistent approach in determining design patent functionality. However, the Federal Circuit has held that where alternative designs exist, a design is less likely to be dictated by function.
In sum, the visual characteristics of a manmade object are eligible for patent protection if the characteristics are not determined by the object’s function, are not simulations of naturally occurring objects or persons, are not found in prior designs, and are not predictable based on a combination of prior design traits. Designs are more likely patentable if the object is commercially successful because of its visual characteristics, and alternative designs for the function are possible. Some examples of well-known patented designs are depicted below (note: the design claimed does not include dotted line portions).
2. Scope of Protection
Unlike utility patents that receive 20 years of protection from the application’s filing date, design patents receive 15 (14 prior to Hague) years of protection from the patent’s issuance date. However, design patent holders have the same rights as utility patent holders. They can prevent others from using their designs through injunctions, and they may be entitled to monetary damages for infringing uses. A court is likely to grant a preliminary injunction (i.e., stop order) if the patent holder can show: (1) a reasonable likelihood of success in proving the design patent’s validity and infringement; (2) the irreparable harm the patent holder will suffer if preliminary relief is not granted; (3) the balance of hardships tips in the patent holder’s favor; and (4) the adverse impact on the public interest. The weight, or lack of, any one factor is left to the court’s discretion in determining whether to issue an injunction.
Successful designer-litigants are entitled to monetary damages. They can seek the reasonable royalty rate the infringer would have paid, the amount of profits the design patent holder lost due to the infringing design, or the infringer’s total profits derived from the infringing design. Courts also have the discretion to triple damages if they find that infringement was intentional.
B. Other Intellectual Property Regimes - Copyright and Trademarks
Designers may also seek design protection under copyright and/or trademark law. Indeed, it is not uncommon for some designs to be protected by a combination of intellectual property laws. However, as will be discussed shortly, each has its limitations.
1. Copyright Protection of Industrial Designs
Copyright protection is granted to original works of authorship. As discussed previously, the bar for originality is low. So long as a work originated with the designer and there is no evidence that the designer appropriated any elements from another, copyright protection will be granted. Unlike design patents and trademarks, copyright is granted the moment a copyrightable work is fixed in a tangible medium. US copyright laws grant the exclusive right to reproduce the work, to create derivative works, and to sell, rent, license, or otherwise transfer the work to the public. While copyright protection does not require registration (common law copyright), there are certain advantages to registering. For example, registration creates a presumption that the work is a valid copyright and owned by the registrant. Additionally, infringement suits cannot be brought and certain remedies cannot be obtained unless the work is registered. Regardless of registration, copyright protection lasts for the life of the creator plus 70 years, which is significantly longer than 15 years of design patent protection. However, obtaining a copyright for industrial designs may be more difficult.
US Copyright Law provides protection for pictorial, graphic, and sculptural works, which includes industrial designs. However, copyright protection will be granted “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” In other words, protection will not be granted for designs that merge the aesthetic with the functional elements of the article. This essentially removes the design elements of most automobiles, handheld devices, and clothing from the scope of copyright protection. According to the Ninth Circuit, functional elements should “not be eligible for the relatively long-term protections of copyright,” and are better suited to “the more temporary rights provided by the Patent Act.” Compare the nonfunctional copyrighted lamp base statuette in Figure 8 with the functional non-copyrightable bike rack sculpture in Figure 9 .
2. Trademark Protection of Industrial Designs
Designers may also pursue protection through trademark law if their design is distinctive, non-functional, and the use of the same or similar design by another would cause a likelihood of confusion amongst consumers. In trademark parlance, designers can protect their “trade dress” or the overall appearance of an article, including its size, shape, color or color combinations, texture or graphics. However, unlike words and logos, which may be inherently distinctive (e.g., “Apple” used for a computer company but not “Cambridge Laundromat” used for a laundromat in Cambridge), trade dress must acquire distinctiveness or secondary meaning. This means that the trade dress must be identified by a significant number of consumers as denoting a particular designer/company and not simply a decorative element of the product. Therefore, there will be a period of time before a design is protected under trademark law.
Even if a designer can prove that her industrial design has acquired secondary meaning, trade dress protection will not extend to functional features of an item. If an industrial design lends itself to utilitarian improvements in manufacturing, handling, shipping, performance, etc., then the design may be ineligible for trade dress protection. Unsurprisingly, if elements of the design are claimed in a utility patent, it is unlikely that the design will be eligible for trade dress protection. Additionally, the trade dress cannot be aesthetically functional or “confer a significant benefit that cannot practically be duplicated by the use of alternative designs.” Fortunately, like design patents, designers can submit alternative designs which confer the same benefits as evidence of non- aesthetic functionality.
Designers can choose to rely on common law protection after their trade dress has acquired secondary meaning or they can choose to register their trade dress with the USPTO for some procedural advantages. Registration creates a presumption that the trade dress is valid, owned by the registrant and is exclusive to the registrant (including imports). After 5 years, the mark cannot be challenged for lack of distinctiveness. Unlike patents and copyrights, trade dress protection, registered or not, is potentially infinite provided that designers continue to use the trade dress in commerce and that the trade dress remains distinctive. 4 The figures below show some industrial designs that have received trade dress protection.
C. Summary of Industrial Design Protection
While the US has not created industrial design specific laws, designers can pursue patchwork protection through patent, copyright and trademark law. The table below compares the three intellectual property regimes.
Table 1. Industrial Design Protection in the US*
|Term of Protection||Start of Protection||Eligibility||Regarding Functionality|
|Design Patent||15 years||Issue of patent||New, original, nonobvious and ornamental||Can contain functional elements but design cannot be dictated by function|
|Copyright||Life of designer plus 70 years||Upon creation||Original work of authorship fixed in tangible medium||Cannot contain functional elements|
|Trade Dress||Indefinite||Acquires Secondary Meaning||Distinctive, non-functional, and use of similar trade dress by another would cause likelihood of confusion||Cannot contain functional elements|
*Numerical values are based on designer pursuing protection today
III. INTERNATIONAL PROTECTION
A. International Agreements Prior to Hague
In countries with sui generis laws (or legislation specifically enacted) for industrial designs, designers can directly apply for industrial design protection. However, like the US, there are many countries where patchwork protection is the only option. Fortunately, designers can seek copyright and trademark protection in several countries through streamlined processes.
The Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”) allows designers to obtain a copyright in a contracting country and to have it recognized in all other contracting countries. The level protection in each contracting country is the same as if copyright had been granted in and by that contracting country. At a minimum, this includes a right to translate, right to make adaptations and arrangements, right of public display, right of reproductions, and a right of attribution. While the Berne Convention sets copyright protection at a minimum of the designer's life plus fifty years, contracting countries are allowed to extend this term.
The Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to that Agreement (1989) operates similarly for trademarks (“Madrid Protocol”). Under the Madrid Protocol, a designer can seek international protection by filing a single international application and designating which contracting countries she wishes to pursue protection. However, while this streamlines the procedural aspects of trademark filings, the trade dress will still be subject to the substantive examination rules of that contracting country. Madrid Protocol registrations are good for 10 years but may be renewed upon payment of the requisite fees.
For US designers, the Berne Convention and Madrid Protocol offered a streamlined approach to pursuing patchwork protection of their industrial designs. Both allowed US applicants to pursue protection in several countries while minimizing and/or avoiding application fees, translation issues (English is an accepted language for international applications), multiple local counsel, and national applications. However, prior to Hague, US designers looking for design patent-like protection had to file applications in each country they wished to receive protection. The ratification of the Hague Agreement now provides US designers access to Berne- and Madrid-like processes for international design patent-like protection.
B. The Hague Agreement
The Hague Agreement is an international registration system that allows applicants residing in contracting countries to obtain protection for their industrial designs in other contracting countries by filing a single international application with WIPO. 5 More specifically, the Hague Agreement collectively refers to three international treaties: the Geneva Act of 1999, the Hague Act of 1960 and the London Act of 1933. The 1960 and 1999 acts each—independently—constitute a fully-fledged international treaty. Countries joining the Hague Agreement can choose to implement one or both acts. While the spirit of the Hague Agreement flows through both acts, applicants may discover procedural differences depending upon their country's decision.
2. Application Process
Industrial designers who: (a) are citizens of a contracting country, (b) live in a contracting country, (c) have a commercial establishment in a contracting country, or (d) maintain a habitual residence in a contracting country (1999 Act), may file an international application for protection directly with WIPO or with their country's national office (1960 Act requires national filing) for subsequent transmittal to WIPO. No prior applications (national or otherwise) are required to file.
International industrial design applications may include up to 100 different designs, however, they all must belong to the same class as listed in the International Classification of Industrial Designs. Applicants must designate which contracting countries protection is sought. However, protection is limited to those countries that have implemented the same act(s) as the designer-applicant's country. For example, a designer in a country that has only signed the 1960 Act would not be able to pursue protection in a country that has only signed the 1999 Act. All international applications must be in English, French or Spanish and be accompanied by the applicable fee payments (in Swiss francs).
WIPO will review the application for procedural compliance only (i.e., correct fee payments, language, quality of reproduced designs, and other formal matters). WIPO does not conduct any substantive examination of the application. Questions of novelty, originality, functionality, and, in some cases, obviousness are left to the designated, national offices. Once WIPO has concluded that an application complies with the formal requirements, it will record and publish the application in the International Register. Applicants concerned with design theft or counterfeiting may request that publication be deferred for a period of up to 12 months (1960 Act) or up to 30 months (1999 Act).
After the application has been published, each designated country's national office has 6 months (1999 Act countries can elect a period of 12 months) to notify WIPO that the application is refused for substantive reasons only . Applicants wishing to appeal the refusal must do so at the national level. The Hague Agreement and WIPO are no longer involved. If no refusal is given within the prescribed period or a notice of allowance is received, the industrial design is granted the same protection under the respective country's laws as if it had been filed directly in that country. Successful registrations are effective for 5 years but may be renewed for subsequent 5-year periods and up to the amount allowable by the designer's home country. For example, US designers’ international registrations may be renewed twice for a maximum period of 15 years.
The Hague Agreement provides a centralized avenue for industrial designers to pursue protection of up to 100 of their designs in multiple contracting countries with a single application. This saves designers time and money by avoiding multiple applications for multiple designs in multiple countries; whereas before, they might spend weeks navigating the various procedural hurdles and language barriers that each national office presents. Additionally, designers no longer have to juggle and monitor maintenance fees from multiple countries' offices. There is only a single date from the WIPO office. Similarly, any tweaks to the registration (address changes, ownership changes, etc.) can be handled directly by WIPO without having to contact each country's office.
The Hague Agreement provides procedural relief only to eligible applicants or those sufficiently affiliated with a contracting country. Moreover, eligible applicants may pursue protection only in countries that have implemented the same act as the applicant's country. Because substantive examinations are still handled at the national level, applicants may not be able to file a “one-fits-all” application. Additionally, while the list of contracting countries continues to grow, many countries have yet to sign including Canada and China. Further complicating matters is the fact that some countries “opt out” of certain provisions; so additional actions may be required in some contracting countries.
5. Effect in the US
The ratification of the 1999 Act of the Hague Agreement brings several changes to the USPTO and US designers. In addition to standardizing the formal requirements for international design applications, the Hague Agreement deputizes the USPTO to receive international design applications. Similarly, the USPTO is able to accept, for substantive US design patent examination, design applications filed elsewhere that have designated the US. Any design patents that issue from Hague Agreement applications will be granted the same rights as if filed directly with the USPTO. This includes the extended design patent duration of 15 years (extended from 14 to 15 under the Hague Agreement).
Notwithstanding the Hague Agreement process described above, the US has opted out of or amended a few Hague Agreement provisions. For example, the Hague Agreement and many foreign offices do not require a written claim. However, the US has stated that applicants that designate the US must contain a written claim to receive a US filing date. Similarly, the USPTO allows only 1 design, with variants, per application. If an applicant includes 99 other designs, these will have to be pursued separately. Another difference is regarding the publication of applications. In the US, design patent applications are not published until granted, whereas the Hague Agreement provides for publication prior to design patent grant. Accordingly, the US provides for provisional rights, such as entitlement to reasonable royalty rates for infringing uses prior to a design patent grant, where international applications designate the US. This is consistent with the quid pro quo nature of the US patent system. In exchange for public disclosure of one’s novel, original, creative design, the US will provide some form of compensation.
Although the Hague Agreement does not provide for a convenient “one stop shop” for industrial designers seeking international protection, it significantly simplifies the formal application requirements in many (but not all) countries and saves applicants costs in multiple application fees. The US's recent ratification not only extended this costs saving mechanism to US industrial designers but it also had the effect of extending the design patent term to 15 years and providing for provisional rights in an application following its publication. While all contracting countries can still reject an application pursuant to their own substantive examination rules, the Hague Agreement simplifies the procedural steps for most applications in an ever growing global market.
The material contained in this newsletter is for informational purposes only and is not intended to be legal advice. It is understood that each case is fact-specific and that the appropriate solution in any case will vary. Transmission of this material is not intended to create and receipt does not establish an attorney-client relationship. While the material is intended to be accurate, errors or omissions may be contained herein, for which any liability is disclaimed. Legal advice of any nature should be sought from your legal counsel.Endnotes
- For the purposes of this publication, citations are omitted but are on hand with the author.
- There is one exception to this statement. Design protection for vessel hulls is explicitly addressed in legislation. See The Vessel Hull Design Protection Act, 17 U.S.C. §§ 1301-1332 (2012) (affording a copyright-like protection for vessel hull designs).
- Some have argued that design patents were a response to economic pressures. The patent system provided a way of ensuring that companies could benefit from their designs without competitors immediately seizing upon them. While protection under copyright may have also been available, other factors may have led to designs falling within the Patent Office’s purview. These factors include: a) the protected terms for copyrights and patents, at the time, were not too dissimilar, b) the differences in substantive rules were minimal, c) the fee for filing with the Patent Office was exponentially higher than filing for copyright, d) the Patent Office was in need of a new stream of revenue, and e) those seeking protection for industrial designs were working with legislators with strong ties to the Patent Office.
- Trademarks can lose their distinctiveness through “genericide” wherein trademarks are commonly used to refer to a type or use of product rather than the manufacturer. For example, “aspirin” and “zipper” where once trademarks but have since lost their distinctiveness.
- For a current list of Hague Agreement contracting countries, visit: htttp://www.wipo.int/hague/en.
- The London Act is currently “frozen” and unavailable for registrations.