Design Patent

Design patent registration

design patent is a form of legal protection – exclusive right – granted to the owner of an ornamental design of a functional or non-functional item. A design is the appearance of a product: shape, pattern and colors. In the below countries one needs to only pay an official fee and meet other formal requirements for registration, there is no official novelty search.

Your design must meet two criteria: It must be new at the time of registration and it must have individual character.

Novelty
The design must be new at the time of registration. No identical or only in insignificantly different design may have been marketed, exhibited or otherwise made available to the public before the date of filing or priority date.

An exception to this principle is the “grace period”. The novelty grace period allows the designer of a design patent a period of up to twelve months (before the application or priority date) for the publication of the registered design in order to be able to assess its success in the market. This means that if the designer himself has published the design before filing the application, this does not damage novelty if there are no more than 12 months between publication and filing. Please consult us about the details of this rule, as it is a bit more complex.

Individual character
A further prerequisite is that the design must be unique: its overall impression must differ from that of already known designs. Here, neither the layman’s nor the product designer’s view is important. What is decisive is the overall impression created by a so-called “informed user”.

A special design level in terms of quality is generally not required. However, the degree of freedom of the designer is taken into account. The freedom of design may be limited, for example, if a large number of similar designs already exist in the relevant field. If the design freedom is restricted, the requirements for the degree of differentiation may be correspondingly lower. In this case, designs can also exhibit individuality if they differ only slightly from previous designs. A high design density exists, for example, in the area of pens.

EU design patent 008210652-0001
Example of an EU design patent drawing – a pencil holder

The DESIGN PATENT REGISTRATION PROCESS

First, receipt of your design drawings or photographs of the product from seven angles (up, down, left, right, bottom, front, perspective) followed by …

On the application, the design and its product(s) should be described using the terminology of the international Locarno Classification

Consider a multiple application for your other designs belonging to the same Locarno class

Following that, payment of the design patent application fee

Application online – there is no novelty search

In case of a smooth application, registration of the design patent within a few days (up to a few weeks for large multiple applications) for a period of five years; receipt of the Certificate of Registration from the patent office

European design patent basics

What is a design / design patent / industrial design?

These names are different variations of design protections for the appearance of the whole or a part of a product resulting in particular from the features of the line, contours, colors, shape, texture and/or materials of the product and/or its ornamentation or even pattern. A product shall be considered to be any industrial or handicraft article, including packaging, graphic symbols and typefaces. Parts of products which can be disassembled and reassembled may also be protected.

The design patents are territorial: The owner of a design patent usually protects a design by registering it at a country-specific office (e.g. DPMA in Germany; UK IPO in the United Kingdom) or at a cross-border office such as the Intellectual Property Office of the European Union – EUIPO – obtaining a registered Community design.

Under European law, a design can be registered, but unregistered designs are also protected to a certain extent. Unregistered designs are acquired automatically and without formalities. The unregistered design right is more limited in scope and duration (3 years) than the registered design right.

The views of design patent registrations

Design patent representation / drawing tips

All products can be represented by drawings from the seven classic angles. Please use a homogenous background (e.g. white) and no other objects. Once you decide to use drawing, please only use drawing for all images, without colours (black and white).

Designs with alternative positions are of an appearance that can be modified into various configurations without adding or removing any parts. Views showing different configurations of the design patent are acceptable if no parts have been added or deleted.  For example an object in a closed and in an open position. In some cases, different configurations may result in different products, such as a bag that can be converted into a towel. We have to be careful with this, as if they fall within a different main Locarno class, then no multiple application is available, only a single application, e.g. one design per application.

Exploded views are views where parts of a product are shown disassembled, to clarify how the parts fit together. Exploded views must be combined with at least one view representing the assembled product. In these views, all the product’s parts must be shown disassembled in a separate single view. The disassembled parts must be shown in close proximity and in order of assembly.

Views magnifying part of the design show one part of an overall design on an enlarged scale. A single magnified view is acceptable provided that the magnified part is already visible in one of the other views. The view that shows the magnified part of the design patent application must be presented in a separate single view.

Sectional views are rarely relevant, but they are cutaway portions that complement aspect views by illustrating a feature or features of the product’s appearance, such as contour, surface, shape or configuration. E.g. a chair recliner design.

EUROPEAN DESIGN PATENT Fees – Clear & Fixed –

EU design patent application for one product

EUR 350

Fixed fee, all inclusive official fee of one European design patent

This is only the official fee

No hidden fees, no small print, but including official publication and registration

EU design registration for two products IN A MULTIPLE APPLICATION

EUR 525

Two designs in the same application that are in the same class and have the same applicant

This is not an additional fee but this is the total cost up to registration, including publication

European Union design application for three products

EUR 700

For three designs in the same multiple application, in total

EU design renewal #1

EUR 90

Fee for the first period of renewal, invoiced per design

EU design renewal #2

EUR 120

Official fee for the second period of renewal, per design

EU design renewal #3

EUR 150

Statutory fee for the third period of renewal, invoiced per design, not per registration

Application for the declaration of invalidity of European design patents

– ask for a quote –

We assist you with defense or offense. This action can be filed by the right holder of the earlier right or – with restrictions – by anyone.
You can find some additional information at the site of the EUIPO here

EUIPO refusals

– ask for a quote –

We can assist you to overcome an ex officio refusal of the EU Intellectual Property Office. EUIPO refusals are mostly formal. The formalities of an EU design patent must be observed with scrutiny. However, there is sometimes a way to “repair” filings. The EUIPO usually grants a two months deadline for a reply.

Various steps after registration

– ask for a quote –

We can handle complex issues, from negotiations to EU border measures, court procedures, Amazon complaints and conflicts.

GERMAN DESIGN PATENT Fees – Clear & Fixed –

German design patent application for one product

EUR 60

Fixed official fee, all exclusive of filing of a German design patent

This excludes the fees of the design lawyer of your choice but includes publication

German design application for additional products

EUR 6

This is an additional fee and has to be added to the fee to the left

German design renewal #1

EUR 90

This covers the first 5 year renewal

German design renewal #2

EUR 120

This covers the second 5 years term

German design renewal #3

EUR 150

This covers the third 5-year renewal

German design renewal #4

EUR 180

This covers the fourth 5-year renewal. This is the last term, as German design patents may be protected up to 25 years

Application for the declaration of invalidity of German design patents

– ask for a quote –

We assist you with defense or offense. This type of action is based on relative grounds. This means, it is based on an earlier right. This action can only be filed by the rightholder of the earlier right. You can find some additional information at the site of the DPMA here

DPMA refusals

– ask for a quote –

We can assist you to overcome an ex officio refusal of the German Patent and Trademark Office. DPMA refusals of German design patents are mostly formal. The formalities of a German design patent must be observed with scrutiny. However, there is a way to “repair” filings. The DPMA is quite generous with deadlines

Determination of invalidity actions against German design patents

– ask for a quote –

This procedure can be launched by anyone, because it is based on absolute grounds for invalidity. Absolute grounds are for example the lack of novelty. Another notable ground is: lack individual character. These two usually go hand in hand.
We can either represent the offense or the defense.

UK DESIGN PATENT Fees – Clear & Fixed –

UK design patent application for one product

GBP 50

Fixed fee, all inclusive online filing of a UK design patent

This excludes the fees of the design lawyer of your choice but includes publication

UK design application up to NINE products IN A MULTIPLE APPLICATION

GBP 70

This is an additional fee and has to be added to the fee to the left

UK design renewal #1

GBP 70

This covers the first 5 year renewal

You can make a ‘late renewal’ up to 6 months after the renewal date by paying £24 for each complete month that’s passed on top of the renewal fee

UK design renewal #2

GBP 90

This covers the second 5 years term

UK design renewal #3

GBP 110

This covers the third 5-year renewal

UK design renewal #4

GBP 140

This covers the fourth 5-year renewal. This is the last term, as UK design patents may be protected up to 25 years

Assignment of UK design patent

– ask for a quote –

We take over the burden of these very bureaucratic steps from you. Please contact us preferably in advance of the planned IP transfer, so we can provide you with an assignment form in a timely manner

UKIPO refusals

– ask for a quote –

We can assist you to overcome an ex officio refusal of the UK IP Office. UKIPO refusals of UK design patents are mostly formal. The formalities of a design patents must be observed with scrutiny. However, there is a way to “repair” filings

Change of name or address OF UK DESIGNS

– ask for a quote –

We make it easier for you, there is no need to edit documents

HUNGARIAN DESIGN PATENT Fees – Clear & Fixed –

HUNGARIAN design patent application for one product

HUF 32 000 (ca. EUR 90)

Discounted fee of HUF 8000 (ca. EUR 22) if the applicant is identical with the private person designer

No hidden fees and it includes publication

HUNGARIAN application for ADDITIONAL products

HUF 6 400 (ca. EUR 18)

There is a fee discount – HUF 1600 (ca. EUR 5) if the applicant is identical with the designer

This is the official cost per product in a multiple application up to 51 designs

DESIGN RENEWAL HUNGARY #1

HUF 64 000 (ca. EUR 180)

Renewal of a design patent, 1 product, first 5 year renewal term, including forwarding the renewal certificate

The price discount when the applicant is identical is 50%

HUNGARIAN design renewal

HUF 85 400 (ca. EUR 234)

This covers the second 5 years term; the discounted fee is 50%

DESIGN PATENT RENEWAL HUNGARY #3

HUF 107 000 (ca. EUR 293)

This covers the third 5-year renewal; a lowered fee is available for designer at a 50% rate

HUNGARIAN DESIGN PATENT RENEWAL #4

HUF 160 000 (ca. EUR 438)

This covers the fourth – last – 5 years term; the designer’s fee would be only half of this fee

REQUEST TO RECORD AN ASSIGNMENT OR A LICENSE

HUF 16 500 (ca. EUR 45)

You can find the complete list in Hungarian at the site of the HIPO here

HIPO refusals

– ask for a quote –

We can assist you to overcome an ex officio refusal of the Hungarian Intellectual Property Office (HIPO). HIPO refusals of national Hungarian design patents or international designs are usually formal.

Cancellation Request and to record a change of name or address

– ask for our quote –

A cancellation request costs HUF 140 800 (ca.EUR 385) at the HIPO

There is no statutory charge for the change of name / address at the HIPO, it is for free as the patent office would like you to update your data regularly

FRENCH DESIGN PATENT Fees – Clear & Fixed –

FRENCH design patent application for one product

EUR 86

Official fee of a colour French design patent – “DESSINS ET MODELES”

No hidden fees and it includes publication

French design application for two products

EUR 133

The images / representations of the design may be in colour or in b&w, this is the statutory fee of colour filings

French design application for additonal products

EUR 47

This is an additional cost to the fees to the left, it includes colour filings. There is a discount for black and white filings

You can make a ‘late renewal’ up to 6 months after the renewal date by paying an extra fee

French design renewal

EUR 90 to 180

The official government fees are EUR 90 for the first 5-year period, then EUR 120,  150 and finally EUR 180 for the last period

Taking over representation at the INPI

– ask for quote –

This covers the third 5-year renewal

Assignment of a design registration

GBP 140

The assignment of a French design costs EUR 27 per design as far as the official fees are concerned

All fees

You can find the complete list in French at the site of the INPI here

INPI refusals

– ask for a quote –

We can assist you to overcome an ex officio refusal of the INPI. INPI refusals of national French design patents are usually formal. The formalities of a design patents must be observed with scrutiny.

Request to record a change of name or address

– ask for our quote –

There is no government charge for this service at INPI, it is for free

Design patents – Frequently Asked Questions – FAQ

What documents do I need to register an EU design patent?

To file an EU design patent application we do not need a signed Power of Attorney or authorization. However, we need the full name, address, postal code of the applicant. We also need the general name / type of the product and photos or drawings or rendered images of the product. The best way to present an EU design patent is to have a picture or drawing from all sides plus one from perspective. This means, generally we use seven pictures or drawings. Additional images may be filed.

What is the biggest pitfall for European design patents?

The biggest pitfall of them all is lack of novelty. If your competitor or yourself or your manufacturer or your distributor already sell the product. In other words, if you seek European design registration after the product hit the market. In this case the design patent may not be new at the time of application. Later, this could lead to the cancellation of the design patent. It is important to tell us about this, as it is an important aspect. Please also mention foreign design patent applications, because they need to be coordinated.

How long is a European registered design protected?

The protection lasts five years and can be renewed four times additionally. We would gladly assist you in the renewal of your design patent. If you want to renew a European design patent, you should consult us in due course. It only makes sense to renew a design if there is a commercial purpose of it. The renewal process is fairly simple, however, close attention must be paid about deadlines and bank charges.

Can you give some examples for a design patent with drawings?

The Common Communication on graphic representation of designs contains a simplified summary: “Show the design from certain directions (angles) and encompass the following views: front view, top view, bottom view, right side view, left side view, back view and perspective views. The applicant is recommended to file as many views as necessary to fully disclose the features of the design. In some cases one view can be sufficient.” See below examples of registered design patent RCD No. 007958285-0001.

Is the cost of a UK design low?

As far as we know, the prices for UK design patents are really low. This kind of IP right can be turned into a great moneymaker. Therefore, the initial investment is justified. Also, generally, it is a good strategy to invest in intellectual property. Moreover, the cost of a UK design  patent is much lower than the cost of a European design patent (RCD). Hence, if you have business in the UK, for example if you are an Amazon seller, then a UK registration may be cheap and sufficient. On the other side, if you have business in EU Member States, you should consider filling an EU design patent.