The law and strategy regarding design patents is evolving, especially in global design patent work. The European Union protocols of 2003 are changing strategy in global design protection. Also on a global scale, experience suggests that inconsistencies in drawing and in scope are issues of concern and, therefore, must be considered within a patentee's prosecution plan.
This paper summarizes recent developments in global design patent work and provides recommended strategies and approaches for consideration. In it, we focus on design patent registrations for designs of products that have a substantial functional purpose, other than appearance.
The first section of this paper lays the groundwork for a discussion of global design protection, by briefly exploring selected key issues relating to preparing and prosecuting such design patent applications in the United States. Then, we turn to a discussion of their analogs in some other countries, gaining insight directly from practitioners in those countries whom we interviewed for this article. Lastly, we conclude with practice pointers distilled from this comparative study.
A final note, before turning to our examination of certain aspects of design patent law and practice globally. In our opinion, it is a mistake to assess and analyze design protection, on a global basis, by analogy to utility patent protection. The principles of registration and protection differ sufficiently from country to country, to warrant avoidance of any such approach.
A New Look at Global Design Protection: Strategies and Recommendations