Priority for Foreign Filing of Design Patent Applications

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Suppose that you have an invention disclosure for a design of an article that you want to protect. When you review the invention disclosure, you notice that the design is ornamental, for example, a pattern, on an article such as a chair. You want to file a patent application to protect the design. Can you file a design patent application?  The answer is YES.

For a design patent, 35 U.S.C. § 171 refers, not to the design of an article, but to the design for an article, and “is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980).  The subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). Based on this, you draft a design patent application on the pattern described as applied to a chair. Can you file a design patent application as a provisional patent application? The answer is NO because the right of priority as to provisional patent applications provided for by 35 U.S.C. § 119 does not apply to designs. Therefore, you must file your design patent application as a regular examination design patent application.

After the design patent application has been filed, you want to apply for design patent protection in other countries. Can you file patent applications in other countries based on your previously filed design patent application and claim priority to the previously filed design patent application? The answer is YES but within a shorter time than utility patent applications.

For utility patent applications, under 35 U.S.C. § 119, an application for a patent for an invention filed in this country by any person or assigns who has previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country if the application in this country is filed within twelve (12) months from the earliest date on which such foreign application was filed. However, under 35 U.S.C. § 172, the right of priority provided for by 35 U.S.C. § 119 is six (6) months.

Is there a mechanism (that is, treaty) under which you can foreign file your design patent application? The answer is YES under the Paris Convention. For those countries that belong to the Paris Convention, to obtain a design patent or registered design right in a particular country, the design patent applicant must file an application in that country within six months of the previously filed design patent application.

If you want to obtain design patent protection in multiple countries, you must file separate design patent applications in each country. Can you file a Patent Cooperation Treaty (PCT) application and later claim priority to the PCT application?  The answer is NO because a PCT application does not cover industrial design rights (that is, foreign design patent equivalents) and cannot be relied upon to provide priority for any foreign design rights. (See, e.g., MPEP §1501).  However, MPEP §1504.20 states that a U.S. “design application may claim benefit from an earlier filed PCT application under 35 U.S.C. § 120 if the U.S. was designated in the PCT application.”

Can you file a single multinational design application?  The answer is YES because the Hague System allows for registering up to one hundred (100) designs in seventy-six (76) contracting parties covering ninety-three (93) countries, through the filing of a single international design application (“IDA”).  However, to file an IDA under the Hague System, you must be a national of i.) a contracting party or of ii.) a member state of an intergovernmental organization which is a contracting party, have a domicile or habitual residence in a contracting party or have a real and effective industrial or commercial establishment in a contracting party.  The Hague System allows you to secure design patent protection simultaneously in multiple countries or regions through one international application, in one language, with one set of fees.

Can you file the IDA with the United States Patent and Trademark Office?  The answer is YES because the United States is a contracting party to the Hague System.  Can the IDA claim priority to the previously filed design patent application?  The answer is YES for foreign priority.  Under the Paris Convention, the six (6) month right of priority still applies (see 35 U.S.C. § 172) and a US-designated IDA is entitled to a right of priority based on a previously filed foreign application (a prior foreign design application or foreign utility patent application), PCT application as defined in Section 351(c) of the Patent Act designating at least one country other than the U.S. (see 35 U.S.C. § 351(c)), or an IDA designating at least one country other than the U.S.  In addition, a US-designated IDA may be used as a domestic priority national application for a later-filed U.S. continuation and divisional application (see 35 U.S.C. § 120).

For practice tips, it is recommended that you file a regular examination design patent application to protect the ornamental design for your invention.  Once the design patent application is filed, within six (6) months, consider filing for design patent protection in other countries.  If your country is a member of the Paris Convention and you have one or two countries in which to seek design patent protection, consider filing an application in each country and claim priority to your previously filed design patent application.  If your country is a member of the Hague System and you desire design patent protection in several countries, consider filing an international design application or IDA.  The IDA may be filed with the United States Patent and Trademark Office claiming priority to the previously filed U.S. design patent application. Therefore, using these tips, you may be able to secure priority and design patent protection in other countries based on your design patent application.

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