The implementation of the European Directive offers a relatively simple and cost effective mechanism for designers worldwide to obtain protection for their designs in the European Union. Thus, instead of submitting a separate application in each of the 15 member countries, a designer can now submit a single application to obtain design protection throughout the Union. The simplicity and broad geographic expanse of protection are the greatest benefits the Community Design offers to designers around the world.
The European Community Design is similar to a U.S. Design Patent, but in some instances, the European Community Design gives broader protection, and in others, the U.S. Design Patent offers greater protection. Further, while the European Community Design may be enforced across the member states of the European Union as a U.S. Design Patent can be enforced across the 50 states of the United States, the burdens of proof and available remedies for the patentee vary greatly when a design patent infringer enters the market. This article explores the similarities and differences between European Community Designs and U.S. Design Patents from the standpoints of a patent practitioner and a designer who seek to obtain and enforce a design patent.
In the U.S., the requirement for protection under 35 U.S.C. § 171 is a new, original, and ornamental design for an article of manufacture. The requirement for protection under Article 4 of the European Directive is a new design that has individual character.
The novelty requirement in both the U.S. and the European Union has an exception, providing a grace period of 12 months for a disclosure by the inventor or the inventor's agent. The implementation of this grace period throughout the European Union is in sharp contrast to many previous European national laws, but is harmonious with the requirements in the United States.
While the requirements for obtaining a design patent are similar, the mechanics by which such a patent right is obtained differ greatly between the United States and the European Union. The U.S. provides a substantive examination of both novelty and nonobviousness, thereby treating the design patent application just as a utility patent application. The European Community Design is in effect a registration that does not undergo any substantive examination with respect to available prior art. In addition, the U.S. allows only one design to be claimed in each application, although a single design may include multiple embodiments illustrating an overall similar inventive concept. In contrast, a European Community Design application may include multiple designs.
Regarding scope, special situations can arise in which the U.S. and European design systems yield different protection. Accordingly, it is not always in the best interest of the designer merely to submit to the USPTO what was submitted in the European application and vice versa.
One special situation is the treatment of component parts under European law and U.S. law. In order to receive protection from a European Community Design, a component part must be visible to the end user during normal use of a complex product. U.S. law is broader in that visibility only at some point during the commercial life of the product is sufficient to qualify the part, i.e., the article of manufacture, for design protection.
The U.S. struggled for many years with the protection of computer display icons, otherwise known as graphical user interfaces (GUIs). In order to meet the "article of manufacture" requirement in the U.S., the USPTO has taken the position that a display screen or at least a portion thereof must be shown in the design patent drawings, although the screen or portion may be illustrated in broken lines. The European Community Design accepts that GUIs are proper subject matter for protection merely by defining a "product" to include graphic symbols and typographic typefaces. Given the broader definition, there is no need to illustrate the computer or display screen on which the icon or GUI is displayed in a European Community Design application.
The European Directive also provides an Unregistered Community Design right that is effective immediately following the creation of the design without subsequent action on the part of the designer. The U.S. does not currently provide a similar right under the patent law system, but copyright protection may apply.
In summary, the nuances of U.S. design patent practice and the European Community Design system dictate independent evaluation of the scope of a design claim for each filing, not automatic submission of one for the other.
The use of broken lines in U.S. design practice, as first introduced by In re Zahn, 617 F.2d 261 (CCPA 1980), allows the applicant for a design patent to claim as much or as little of the article of manufacture as they wish. The European Community Design adopts a similar procedure in which broken lines may be used to represent parts of the article for which no protection is sought or for parts which are not visible in the relevant view. Thus, a European Community Design also allows the design practitioner to carefully sculpt a claim of the appropriate scope to achieve the maximum protection available for the designer.