Continental comparisons – EU vs US design rights
In the third article in our series on design protection Carrie Johnson, patent attorney and partner, compares and contrasts the key features of two important jurisdictions – Europe and the US.
Registered designs protect the appearance of a product. To qualify as a Community registered design (CRD), a design has to be new, have an individual character and be not solely dictated by technical function. “Individual character” exists if the design produces a different overall impression on an informed user than other, earlier designs. A US design patent can be obtained for any new, original and ornamental design for an article of manufacture. It must be non-functional and non-obvious. As such more designs are likely to qualify for protection in Europe than the US. For example, GUIs can only be protected in the US if shown on an electronic display, whereas GUIs alone, computer icons and other “non-products” such as a cartoon characters, typefaces et cetera are protectable in Europe.
A CRD initially lasts five years from filing at the EUIPO, and is renewable every five years to a maximum of 25 years. A US design patent lasts for 15 years from grant and no renewal fees are payable. Both have grace periods that permit public disclosure of the design in the 12 months preceding the filing date, and a six-month period for claiming priority from an earlier design application.
The USPTO has stricter drawings requirements than the EUIPO, and will perform a substantive examination. The process can take about 14-18 months and the design is published when the design patent issues. The EUIPO only conducts a formalities examination. Publication can be deferred for up to 30 months from filing; otherwise publication occurs shortly after allowance. Sometimes this happens the same day the application is filed, so care needs to be taken if a design is being kept secret prior to a product launch.
CRDs are generally cheaper and easier to obtain than US design patents. Even including renewal fees, the cost per EU country per year works out at about £2! EU and US designs can also be obtained via the international or Hague route. This is usually even more cost effective.
Community unregistered design rights last for three years from first public disclosure in the Community. There is no corresponding provision in US law although protection may be available via trade mark or copyright registrations. Registering a design, however, gives stronger protection and is preferable if time or budget allows.
