News Bulletin

Ernest Graf

Partner

Fisher Adams Kelly

The shape, style and look of your product is important.

In Australia, registering a design is the preferred and sometimes only means of protecting the shape, configuration, pattern or ornamentation of a product. After a certification process, a design registration owner is granted exclusive Australian rights to make, use, sell and import products that embody the design.

Within six months of registration, corresponding applications can be filed in overseas countries. The applications are back dated to the date of the Australian application. Registration certificates are eventually received from the overseas countries and often no further protection for a product design is obtained.

Further protection is available however in the United States (US). A design can be protected in the US using both design patents and design copyrights, ensuring greater protection against copycat competitors.

US copyrights are useful for protecting product designs for two main reasons.  First, US copyrights have a term of 70 years from the death of the author, while US design patents expire after 14 years.  Second, US copyright infringement can sometimes be easier to prove than design patent infringement and damages can be substantial. Further, registration of US copyrights has the following benefits:

• Registration of a US copyright made before or within five years of publication (of the copyrightable work) is prima facie evidence of the validity of the copyright.
• If registration is made within three months after publication of the copyrightable work or prior to an infringement of the work, damages and attorney fees will be available in court actions, otherwise only actual damages and profits will be awarded.
• Registered US copyrights can be recorded with the US Customs Service for protection against the importation into the US of infringing copies.

There are circumstances where US design patents are easier to enforce than design copyrights. For example, to enforce a design patent there is no requirement to prove actual copying. That means that “independent creation” is not a defence to infringement of a design patent, although it is a defence to copyright infringement.  Thus it is recommended that in the US both design patents and registered copyrights be used to protect product designs. Further, registering US copyrights is relatively inexpensive. Unlike US design patents, registering US copyrights usually involves no application prosecution costs because there is no substantive examination process.

Case study
Design Ideas v Things Remembered, 3:07-cv-03077 (C.D. Illinois, filed March 16, 2007).

Design Ideas owned wire-flower designs and asserted its registered copyrights for the designs in a lawsuit against Things Remembered. The wire-flower designs were included on candle holders and other small products. The pictures below compare some of the original designs of Design Ideas with the copied designs of Things Remembered.

As various wire-flower designs have existed for hundreds of years, one might think that the intellectual property of Design Ideas is narrow and that it would be difficult to prove infringement. That may have been true had Design Ideas sought to enforce only US design patent rights. However, by asserting its registered copyrights and successfully proving actual copying before a US jury, Design Ideas was awarded $774,000 for wilful copyright infringement and lost profits.

For more information, contact:

Ernest Graf

Partner

Fisher Adams Kelly

Phone + 61 7 3229 2655

Email: egraf@fak.com.au

The European Patent Office (EPO) will be implementing several changes to the European patent rules in April 2010. Arguably the most onerous change relates to the filing of divisional applications. The rules are rather convoluted, but the primary consideration for applicants is that divisional strategies should be evaluated as early as possible in the prosecution of a European application, and at least at the time of receipt of a first examination report.

From 1 April 2010, a divisional application can only be filed within 24 months of issuance of a first examination report in respect of a pending parent application. This applies to reports only from the Examining Division – reports from the Search Division do not start the 24 month period. If the parent application is itself a divisional application, the 24 month period starts at issuance of the first examination report in respect of the grandparent application (the earliest application in a series), and so on for a series of applications.

Separately, an unrelated 24 month time period is provided to file a divisional application in response to a non-unity objection. The time period commences from the date of issuance of the examination report in which the non-unity objection is raised for the first time. However, a non-unity objection raised in an Extended European Search Report does not set the 24-month time period – the date of issuance of the corresponding examination report will be the relevant date.

Neither of the above time limits is extendable.

Please contact an attorney at Fisher Adams Kelly for more information or advice if you have existing applications in Europe, or intend to file an application in Europe, which may be subject to the new provisions.

Author: Clarissa Wynne
Contact: +61 7 3229 2655 cwynne@fak.com.au