The scope of European design patents are quite surprising. Unlike in the U.S., design patent applications in Europe are not reviewed by an Examiner to determine patentability – the patent application just has to meet the formality requirements to grant. Thus, the European Union Intellectual Property Office (EUIPO) does not determine the scope of a design patent, a European court does. In addition, European design patents can be used to protect designs typically protected with trademarks.
A European design patent covers any product with the same appearance, regardless if the product is for a different purpose. For example, a European court found that a European design patent for a replica toy car was invalid because of the earlier disclosure of the real car. Similarly, a European court found that a European design patent for a dryer ball was invalid because a massage tool having a similar shape was produced before the dryer ball application was filed. Basically, worldwide novelty applies to European design patents except when the prior disclosure or use could have reasonably become known in the normal course of business.
European design patents can be used to protect trademarks in Europe. Unlike European trademark applications that cost hundreds of dollars for each class (e.g., a field of goods and services) that you want to protect, a European design patent covers a broad range of classes for one filing fee. Thus, the European design patent may have a broader scope of protection than a trademark, which would allow for more leeway in enforcing intellectual property rights. However, because European design patents are valid for up to 25 years, it may be wise to consider obtaining trademark protection as well because trademark can remain valid for a longer time period.
Once you have your European design patent, you may want to enforce it against infringers. European authorities, such as customs and police, use European design patents to stop counterfeit products in Europe. After intellectual property rights (e.g., patents, trademarks, copyrights) are recorded with the European customs, the European authorities do most of the work to inforce intellectual property rights. In fact, they actually enjoy catching infringements. European design patents typically take less than a month from the filing date to grant. It is possible to file expedited applications to obtain European design patents in less than one week. The quick turn-around time for obtaining enforceable design rights allows for quicker enforcement of those rights. Using European authorities to help combat infringers reduces the cost, delays, and uncertainty of litigation.
Compared to U.S. design patents, Europe design patents are very inexpensive and grant quickly, so these patents can be used to start protecting a brand or product. European authorities are a cost-effective way to police your mark in Europe. To better protect your rights in Europe and obtain the scope of protection that you need, file multiple design patent applications, each covering a different scope of a design. Using color and shading in design patent applications can also be advantageous.
About the Author:
Andrea Arndt is a Member in Dickinson Wright’s Troy office. She has over fifteen years of developing and managing domestic and international patent portfolios for startup companies, midsized companies, and Fortune 500 companies. Andrea can be reached at 248-433-7677 or firstname.lastname@example.org and you can visit her bio here.