Brief information about the protection capabilities of product designs. How to apply your exclusive rights to a patent and, on the flip side, how to defend against them

The modern saturation of the product market with various offers leads to a constant struggle between competitors for the attention of consumers. The development and availability of technology makes it possible to create more attractive products, while facilitating the process of copying them. In order to maintain advantages, manufacturers of original products are increasingly looking for ways to protect themselves from imitators. In many cases concerning the legal protection of product design, obtaining a patent for an industrial design can be an effective tool for protecting intellectual property.

What is an industrial design

An industrial design is a solution to the appearance of an industrial or handicraft product. Legal protection of an industrial design is possible upon its state registration and receipt of a patent.

The appearance of various goods can be protected as industrial designs, for example, there are patents for industrial designs: a bottle of Dior perfume (software patent No. 76910), the design of an electric train car (software patent No. 83418), the original shape of ice cream (software patent No. 83703).

An industrial design is granted legal protection if its essential features are new and original. Essential features of the appearance of a product are understood as characteristics that determine the aesthetic features of such a product (for example, shape, material, texture or texture of the material).

It is the appearance of a product that can be subject to protection as an industrial design, while the functional properties are not covered by it. This rule expresses the very essence of a patent for an industrial design as a method of protecting the design of a product. At the same time, if legal protection is required in relation to both aesthetic and technical characteristics, it is possible to build a strategy for protecting one object using patents of different types.

How to obtain a patent for an industrial design

In order for a solution to the appearance of a product to be registered as an industrial design, it is necessary that, in its essential characteristics, it meets the set of conditions of novelty and originality.

The novelty criterion is considered to be met if the specific appearance of the product has not previously been presented to the general public. If the appearance of the product is disclosed by the author of the decision, the application for registration can still be submitted to the registering authority (Rospatent) within a year from the date of such disclosure. In this case, the product’s compliance with the criterion of novelty will not be lost.

The criterion of originality is a reflection of the creative component of the industrial design. That is, the appearance of the product must also be created through the creative activity of the author, and have features that distinguish the declared solution from similar, already existing ones. The compliance of a product with the criterion of originality can be assessed by the ability of its appearance to produce a different overall impression on the consumer, from solutions already known in the world before the date of filing the application for an industrial design.

The right to obtain a patent initially arises from the author of an industrial design, and it can be transferred, for example, as part of succession or by agreement. Consequently, a patent for an industrial design can only be obtained if the applicant is either the author of the solution or has acquired the right to obtain a patent legally. The receipt of a patent by a person who does not have such a right is an independent basis for invalidating the patent.

Time limits and temporary legal protection

The period for registering an industrial design and obtaining a patent takes on average from 5 to 8 months, however, an industrial design has the possibility of temporary legal protection. Temporary legal protection of an industrial design consists in the ability of the patent holder, after receiving a patent for an industrial design, to demand compensation from a person using a similar solution for the period from the publication of an application for an industrial design to the publication of information about the grant of a patent.

This provision does not provide unconditional protection against imitators, but it does provide the opportunity to contact a competitor with a claim and indicate the published application number to indicate intentions to further resolve the issue of compensation for the use of the appearance of the product.

The validity period of a patent for an industrial design is 5 years and is counted from the priority date of the patent. The priority date of a patent is most often recognized as the date of filing an application for an industrial design with the registration authority. The period can be extended several times by 5 years at the request of the patent holder, subject to payment of the established state fee, but the maximum validity period of the patent is 25 years.

Methods for using a design patent

Registration of an industrial design entails the emergence of an exclusive right. The exclusive right presupposes the possibility of the patent owner using the solution in any way not prohibited by law.

As part of the so-called patent “containment” strategy, the solution is used by the patent holder himself, and the patent is a tool for protecting products from copying by competitors. The patent holder can also commercialize the exclusive right to an industrial design by concluding fee-based agreements, under which the right to use the solution is granted to third parties for a fee. The exclusive right to an industrial design can also be the subject of an alienation agreement, under which the right is completely transferred to the benefit of another person.

An “offensive” patent strategy typically involves limiting, through patent protection, the activities of competitors in a product market. The possibility of protecting the exclusive right to an industrial design allows you to make claims and seek judicial protection in cases of violation of the rights of the patent holder. To overcome the effect of a patent, an imitator needs to create a solution that will not correspond to the essential features of the industrial image or, due to a certain set of features, will produce a different overall impression on the consumer. Otherwise, the industrial design may be considered used in the product, and the right to it has been violated.

Challenging a patent for an industrial design

A registered industrial design can be challenged by invalidating the patent. The most common reason in practice is the non-compliance of an industrial design with the conditions of patentability “novelty” and “originality”. A patent can be challenged by filing an objection with the federal executive body for intellectual property (Rospatent) by any person who has become aware of such a violation. The person filing the objection must collect evidence that a similar solution or that produces the same general impression on the consumer was presented in public sources of information before the date of filing the application for registration of the industrial design.

For example, patent for industrial design No. 113553, within the framework of which legal protection was granted to the appearance of the product “Casing for sausages”, was declared invalid by Rospatent as not meeting the patentability condition of “originality”. The Chamber of Patent Disputes concluded that the totality of essential features of an industrial design produces on an informed consumer the same general impression as the products of the same manufacturer distributed before the priority of the patent. Since the decision on the appearance of the product is not due to a creative nature, the patent for an industrial design is declared invalid completely.

There are other grounds for challenging an industrial design patent. Thus, patent No. 74164 “Case for a first aid kit” was declared invalid as contrary to the public interest. The industrial design was the appearance of a case for a first aid kit, with a photo of a BMW car placed on it. The Chamber of Patent Disputes found that since the Russian consumer is familiar with BMW products, the use of an image of a car from a well-known manufacturer on the label of a first aid kit case may mislead the user regarding the manufacturer of this first aid kit, which in turn is contrary to the public interest.

Thus, before filing an application for registration of an industrial design, it is necessary to ensure that the solution complies with legal requirements and patentability conditions. Otherwise, at the request of other persons, the patent may be declared invalid, which will entail not only the loss of legal protection of the decision, but also additional financial risks.

Since a patent simultaneously certifies the priority of an industrial design, authorship and exclusive right, if the solution meets the requirements, its receipt simplifies the process of protecting against copying of a product, as well as against unlawful claims of third parties. Building a competent patent strategy allows you to strengthen competitive advantages, minimize the risks of loss of intellectual property and concentrate on further development and promotion of the product.

Konovalova Ekaterina

Source: RBC