NEVA-PATENT provides services for the patenting of industrial designs abroad, both through national procedures and through the EU industrial design registration system.
International patenting of industrial designs.
A patent for an industrial design is valid only within the territory of the country that issued the patent. Therefore, to obtain legal protection in all countries of interest, it is necessary to obtain the appropriate protection documents in each of those countries.
Procedure for foreign patenting of an industrial design
There are no restrictions on filing applications for industrial designs in foreign countries. An application can be submitted before or after filing in Russia, or even without filing in Russia at all, if such patenting is not necessary.
How to obtain legal protection for an industrial design abroad
Currently, it is possible to file an application for a national patent in the desired country or to use the system for registering industrial designs in EU countries (industrial design of the European Community) by submitting a single application.
The national procedure for filing applications involves obtaining legal protection in each individual country by filing an application directly with the relevant patent office through a local patent attorney—a citizen of the country where protection is sought.
Protection of industrial designs in European Union countries.
An application for registration of an industrial design in EU countries is filed with the Office for Harmonization in the Internal Market (OHIM) by submitting a single application in one language with payment of a single fee.
What is protected as an EU industrial design.
According to Article 3 of the Regulation “Community Designs” (EC Regulation 6/2002 on Community Designs of 12 December 2001), an industrial design is defined as the appearance of a product or a part thereof, as expressed in features such as lines, contours, colors, shapes, texture, materials of the product, and ornamentation. A product is understood in a broad sense, encompassing not only industrial or handicraft-manufactured items and their component parts, but also packaging, get-up, typographic typefaces, and graphic symbols (the term “graphic symbols” excludes computer programs).
Legal protection is not granted to designs that are contrary to public policy or accepted principles of morality, or to those that consist solely of functional features.
During the examination of the claimed designs, the EU office also follows the aforementioned regulation. It sets out two criteria for the protectability of an industrial design: it must be new and have individual character (i.e., originality).
An industrial design is considered new if no identical or nearly identical design was known prior to the filing date. A publication anywhere in the world disclosing the essential features of the claimed design may compromise its novelty.
A design is not considered part of the prior art if it was disclosed:
– by its designer within 12 months prior to the filing date, by presenting a single copy at an exhibition;
– by third parties as a result of unauthorized disclosure of confidential information.
To meet the criterion of “individual character”, the design must produce on the informed user an impression different from that produced by designs known at the time of filing.
Who has the right to file an application for an EU industrial design
The right to protection of an EU industrial design, whether registered or unregistered, belongs solely to the author of the design or their successor in title. If there are several authors, they jointly own the right to the EU industrial design. In such cases, the exercise of rights is governed by a contractual agreement between the co-owners, or in the absence of such an agreement, by the laws of the EU member state where the right is exercised.
Specifics of EU legislation
An industrial design may be presented in a photograph or drawing (sketch) in one or several views (no more than seven). There is no requirement to provide images of all sides of a three-dimensional design. The fewer side views and features of the industrial design that are presented, the broader the scope of protection granted.
Presentation of the design in a photograph may reduce the scope of protection, as it reflects not only the shape of the industrial design but also other characteristics such as the material appearance, surface texture, etc.
An EU industrial design may be submitted in color or in black and white. Protection of a design submitted in a specific color applies only to that color. If the design is presented in black and white, protection extends to all colors. The applicant may disclaim secondary characteristics of the industrial design.