A Registered Design or a Design Patent protects the ornamental external shape of an industrial product. The protection is granted to the conspicuous shape of the product, that is to say the unique shape, as it is captured by the eye and influences the consumer to choose that specific product, is protected by the Design Patent.
GKDM’s professional legal service with regard to Design Patents combines comprehensive legal knowledge in a variety of related fields, including Commercial Torts, Copyrights, Unjust Enrichment, and more.
The firm’s professional services include:
- Examining the feasibility of applying for a Design Patent;
- Design Patent application in Israel;
- Design patent application abroad;
- Handling ex officio/provisional refusals to register and various proceedings before the Patent Office;
- Cancellation of registered Design Patents;
- Sale and transfer of rights in Design Patents;
- Litigating before the Patent Office IP Tribunal as well as Design Patent infringement cases in court; and more.
How to protect your product design?
In order for a product to merit a Design Patent protection it must be new or original and includes a conspicuous external design which was created through an industrial process. Accordingly, the product must not be made public prior to the filing of the Design Patent application, and the design may not be purely functional. When a product’s shape is dictated only by the objective which the product is aimed to achieve, and there is no other way to achieve that same objective, the functionality is what dictates the shape. If so, the design of the product does not merit for a Design Patent.
In order to merit protection one must submit an application for registration to the Patent Office. The application undergoes a professional review by a Design Patent examiner. Only if it meets the conditions stipulated by law, a Design Patent certificate is issued and Design Patent protection is granted.
It is important to remember that the revealing of the design in public prior to the filing of the Design Patent application will usually (except in certain exceptional cases) cause the disqualification of the application, and the product will not receive Design Patent protection. Presentation or marketing of the product as well as any public use thereof or the publishing of a written description of the product in an exhibition, newspaper, on the internet, and so forth, constitute a prior publication that will probably disqualify the application.
Products which are appropriate recipients of Design Patent protection are not protected by copyright. Hence, it is important to file a proper Design Patent application in an orderly manner by a professional who is well familiar with this field of expertise. In the event of deficiencies in the application, it is likely to be dismissed and the product shall neither be protected by Design Patent nor by copyright – i.e. the product design may become of public domain.
* Picture: US Design Patent of a Star Wars character, 1985. Designed by J.E. Johnston – Lucasfilm Ltd.
The above is an overview and does not constitute a legal advice. Professional legal advice requires individual examination of the specific circumstances.