The European Design Patent has Arrived!

Originally published on July 15, 2003

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...