New European Community Design Patent
By: Alexander R. Schlee
Viering, Jentschura & Partners, L.A. Office
Since January 2003 applications for Registered Community Designs
have been available under the new
Regulation on
European Community Designs (pdf format). All applications for
these design patents—known as “RCDs”—filed on or
before April 1, 2003 received that April 1st as their filing date.
What qualifies for protection as an RCD?
An Industrial Design "means the appearance of
the whole or a part of a product resulting from the features of, in particular
the lines, contours, colors, shape, texture
and/or materials of the product itself and/or materials of the product itself
and/or its ornamentation." The requirements
should therefore be fairly similar to a U.S. Design Patent Application.
Who can file for European design
protection? The creator of the design or any
legal successor, irrespective
of nationality or place of residence. The legal successor can be either an
individual or a legal entity, so that applications
can be filed in the name of the creator’s employer.
Where can RCD applications be filed?
An application can be filed directly at the
Office for Harmonization in the
Internal Market (OHIM), located in Alicante, Spain, or indirectly through the national
office of any European Community country.
When should an RCD application be filed? Preferably, before public disclosure
of the design.
What is the grace period for public
disclosure? If a public disclosure prior to the filing or
priority date is based on the work of the
creator, a 12-month grace period applies. The grace period is calculated from
the filing date, or if a priority is claimed,
from the priority date.
What priority may the applicant claim? A 6-month priority can be claimed from
any prior design patent or
utility model application filed in any of the Paris Convention countries or in
any of the WTO member countries.
What is the novelty requirement? There is a worldwide novelty requirement,
but prior published designs affect
novelty only if they could reasonably have become known in the normal course of
business to those specialized in the
concerned field of business operating within the EU.
Which territories are covered by an RCD application? All 15 EU countries.
These are currently Austria,
Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxemburg,
The Netherlands, Portugal, Spain,
Sweden, and the United Kingdom.
What is the maximum property duration? 25 years from the filing date,
provided maintenance
fees are paid on time in 5-year
intervals.
What are the costs? Extremely low! The official
filing fee totals $350 (US). Foreign
associate charges might total about $ 500 (US). For a minor surcharge, several designs can be combined into one application. No designation fees
or validation formalities are required. Consequently, any RCD covers all of the
EU without any extra costs.
Any downsides to this community-wide design protection? A central invalidity suit can be filed against the
entire RCD, invalidating the RCD for all
EU countries. To avoid this risk, applicants should consider filing parallel
national applications in the most important EU
countries. The first licensed sale of a particular RCD-protected product
exhausts the design registrant's to control use or subsequent sale of that
particular product throughout the EU.
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