As noted in this post
, U.S. design patents usually need to be filed within 6 months of a foreign priority application. This is because many foreign design registration systems grant design registration almost immediately, guaranteeing that the registration will be granted before your U.S. design patent application is filed and implicating 35 U.S.C. 102(d) (see also MPEP 1504.02
). Thus if you wait longer than 6 months from your foreign design registration, you will lose the right to get a U.S. design patent.
So what if you miss the deadline? What are your options? Well, you can try to shoehorn your design into one of the other kinds of IP protection: copyright, trademark, or utility patent protection. You might also consider relying on unfair competition law to protect you. I will address each of these four alternatives to design patent protection in turn.
1. Unfair Competition
In European countries, the laws of unfair competition might be sufficient to protect you from competitors seeking to copy your designs. Some European countries have laws of "slavish imitation" for example, which protect you against exact duplication of products, even if not protected by IP.
However, in the U.S. such laws are very limited in scope. They are also state laws, which vary from state to state. The U.S. Supreme Court has held that copying a public domain (unprotected) design cannot in itself be the basis for a claim of unfair competition. There would have to be something more suggesting that the competitor was trying to pass itself off as your company. Essentially, you would have to show that your competitor was actually impersonating you. So unfair competition laws would be a last resort if you had no other options
Usually when an overseas client misses a date for a design patent filing, the first alternative they think of is copyright protection. However, copyright protection is frequently unavailable because copyrights do not protect functional objects. Even if there are artistic elements to a functional object, they have to be physically or conceptually separable to be copyright protected, which is a higher standard than it may seem.
Basically, if the artistic part can be removed form the rest of the object, or if the design is a carving or graphic design that could be placed on any medium, not just the functional object, it probably can be protected by copyright. But even if your functional object looks really cool and could be considered a sculpture, it probably is not going to pass muster.
Copyright protection is a good alternative if available, as it is inexpensive ($35 government filing fee) and pretty fast (6-12 months) and lasts a long time (95 years for corporations). However, copyrights only protect against copying, not independent development- you have to show access to your design to prove copyright infringement.
3. Utility Patents
If the design has a function and is new and nonobvious, you may be able to get a utility patent for it. The downside of utility patents is that they are expensive and take a long time to be granted. The plus side is that they protect the function of your design, not just the appearance, and can have a very broad scope of protection. They last for 20 years from filing and protect against independent development, unlike copyrights. However, utility patent protection is often unavailable (due to lack of functionality) or impractical due to the expense.
4. Trademarks / Trade Dress
Of course even if you cannot protect your new design, you can brand your products and protect those brands with trademarks. However, your design itself may be protected as a trademark under U.S. law as trade dress. Generally both a product's shape and configuration and a product or service's "packaging" can be protected in this way. Service "packaging" might include the appearance of a restaurant or the like.
Registering trade dress as a trademark is more difficult than for other trademarks like business names and logos. A product configuration is never considered inherently distinctive, so it must either be registered on the Supplemental Register or you must prove distinctiveness through long and continuous use, advertising expenditures, actual advertisements showing that the trade dress is emphasized, survey evidence showing recognition by customers, and ultimately an association between your business and the product configuration in the minds of consumers.
A design must be in use to be amended to the Supplemental Register. The Supplemental Register does not grant any special legal strength beyond common law trademark rights but does allow you to sue in federal court and does prevent others from registering an identical mark, and also allows you to use the registration symbol ®.
Packaging can be inherently distinctive, but this is more difficult to show than for other marks. You also have the option of showing acquired distinctiveness as for product configuration.
Trademark protection lasts indefinitely as long as you continue using the mark and paying the renewal fees. It protects against confusingly similar marks used by others, whether deliberately copied or not. Expense is reasonable, as is the time to grant. Often, trademark protection is the best available alternative to design patent protection.