Foreign Design Patents

Written by Susanne Somersalo, Ph.D., Esq., Patent Attorney at Gearhart Law
www.GearhartLaw.com

As was discussed in last week’s blog, a US design patent is an alternative way to get some protection for an invention in the United States. A design patent is valid for 14 years and protects the ornamental design of the invention.

Many other countries have similar type of protections available.

Most of the European countries have design registrations, but instead of filing in several European countries separately it may be more cost-effective to file one application with the European Union Agency called OHIM (Office of Harmonization in the Internal Market). OHIM grants Registered Community Designs that protect the outward appearance of a product. The registration is valid for five years after filing and it is renewable up to 25 years. The registration will protect the design in every country that is a member of the European Union.

In addition to the Community Design many European countries have protection types that give broader protection than design patents but are more limited than utility patents. These protection forms are called ‘utility models’, ‘innovation patents’ or ‘petty patents’, depending on the country.

These kind of smaller patents are also available in other parts of the world, for example China, South Korea, Australia, Japan and in a number of Latin American countries. The requirements for these protection forms vary from country to country. These patents are available mainly for mechanical innovations, not for methods.

Generally speaking the novelty and non obviousness requirements for these types of patents are looser than with utility patents and therefore the examination process is usually fast. The validity time of utility models, innovation patents and petty patents is shorter than that of utility patents.  Usually the validity time is between 6 and 10 years depending on the country.

Utility models, innovation patents and petty patents may be a great and relatively cheap option to protect, for example, products with minor improvements.  If you plan to get your product manufactured or sold outside the USA but your financial assets are not sufficient for broad foreign patent coverage, you may want to consider selecting the most important countries for your business and file a utility model in those countries.

Please contact us at hello@gearhartlaw.com if you’d like more information on this topic.

Gearhart Law LLC
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