© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Using the Hague System to Protect Designs Tracy-Gene G. Durkin, Esq. November 10, 2014

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. What is a Design Patent? Protects the ornamental appearance of an article of manufacture – configuration and/or surface ornamentation –Design must be: Ornamental (although product may have function) Novel and not obvious –Design dictated by the article’s function is not patentable (e.g. key blank) –Design that is hidden is use may be patented if its appearance is a factor in the purchasing decision (e.g. shoe insole) 2

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Contents of a U.S. Design Patent Application Description Claim (may only have one) Drawings –Solid lines –Broken lines Unclaimed boundaries Environment –Surface shading

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Design Patent Examples 4

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Graphical User Interface Design Patents 5 Three different patents all for the same design

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Animated GUI Design Patent 6 Sequence of images in one patent

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Increased Interest in U.S. Design Patents Common measure of damages for design patent infringement is disgorgement of the infringer’s profit A majority of the $1.05 billion judgment in the California Apple v. Samsung case (approximately $700 million) was based on infringement of 3 design patents Copyright 2014 Margaret Polson 7

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. U.S. Design Patent Filings Filings at the USPTO have risen by about 25% since 2009 Major contributors to this increase have been graphical user interfaces (GUI) and designs for mobile devices Despite this increase, most US design applications issue within 15 months from filing Copyright 2014 Margaret Polson 8

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Using the Hague System May file an International Design Application (IDA) with either USPTO or with WIPO Must designate member countries and jurisdictions where protection is desired and pay applicable fees WIPO reviews IDA for formalities and forwards to the designated intellectual property offices, and publishes the IDA at 6 months from filing Intellectual property offices examine IDA under their system

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Noteworthy Change to US Law Patent term for all U.S. design patents increased from 14 years from issuance to 15 years from issuance

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Technical Aspects of IDA Filing A maximum of 100 designs (related or not) can be included in a single IDA provided they are in the same Locarno Class IDAs undergo standard substantive examination according to designated Intellectual Property Offices IDAs can claim priority to original U.S. design applications New U.S. design applications can claim priority to IDAs that designate at least one country other than the United States

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Benefits of Hague System More simplified process for obtaining foreign design protection Savings of time and money –Use of foreign counsel may be reduced –Ability to include up to 100 designs in the same Locarno class can save costs Publishing of application grants provisional rights

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Limitations of Hague System Limited membership –Many important jurisdictions are not yet part of the system: China, Japan, Taiwan, Canada, Mexico, Australia U.S. practitioners must prepare filings with knowledge of idiosyncrasies of systems in member countries –Number and type of drawing figures and written description requirements vary widely among jurisdictions –Loss of novelty provisions may not be available Some filings may require local agent –Information disclosure statements –Declarations

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator Braun ® Epilator –Configuration –Unique Color Scheme –Comfort Grips –Head Features

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator Braun is an international company –Product Designed in Germany –In-house counsel located in Germany Hague system allows German applicant/agent to file IDA directly through WIPO or indirectly through OHIM Must prepare figures to acceptance in multiple jurisdictions –Some permit digital images –Some permit broken lines –Some permit claiming color –Some permit claiming components sold separately Creator names and declaration required in some jurisdictions (e.g. U.S.) Designs were grouped into three applications

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case One 7 Configuration Designs Design 1 – digital images entire product

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case One Design 2 – line drawings entire product

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case One Design 3 – line drawings product without shroud

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case One Design 4 – line drawings head

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case One Design 5 – line drawing shroud

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case One Design 6 – Cap Design 7 – Charger stand

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case Two 3 Partial and Color Designs Design 1 – solid and broken lines head

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case Two Designs 2 and 3 – digital images color and gray scale head

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Epilator – Case Three 3 Partial Color Designs Color digital images head

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Case Study: Summary Know the requirements of the designated jurisdictions as you prepare application Even though can include up to 100 designs in one IDA, group designs based on what jurisdictions permit Be prepared to hire local registered agent to address issues only they can address

© 2010 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved. Thank you! Copyright 2014 Margaret Polson 26