"New Patent Protection In Key European Markets," ME Online Web Exclusive, Aug. 26, 2003

for 8/26/03

New Patent Protection In Key European Markets

by J. Kevin Grogan. Esq.

A significant new form of European Patent protection has recently become available: the Registered Community Design (RCD). It is unique in that its protection falls somewhere between a utility and a design patent, but with the advantages of a registration system, like that for trademarks. Importantly, it is tailored to protect that which companies rely on for growth; new products introduced after significant investment.

The RCD will have uniform effect throughout the European Union, namely in Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden and United Kingdom. A further 13 countries are expected to join the European Union soon.

The RCD will have an initial duration of five years but will be renewable for additional five-year periods up to a maximum of 25 years. The provisions of the regulation governing the RCD of greatest practical interest are:

(1) a broad range of registrable design features including lines, contours, colors, shapes, textures, materials, and/or ornamentation of the whole or a part of any industrial or handicraft item including complex products, packaging, get-up, graphic symbols or typographic typefaces;

(2) no requirement for the design to have aesthetic quality, thereby potentially offering protection to products that have functional purposes but not to features of the design dictated solely by a "technical" function;

(3) a requirement for the design to be novel over designs published anywhere in the world with the exception of published designs which would not reasonably have been known in the EU and of any publication (such as marketing of the product) by the proprietor in the 12 months prior to the filing date (i.e.; a 12-month grace period);

(4) the acceptability of a multiple design application provided that the products in which the designs are incorporated or to which the designs are intended to be applied belong to
the same international (Locarno) classification;

(5) the scope of protection includes any product embodying the design; and

(6) publication of the RCD may be deferred for a period of thirty months on payment of a fee.

One consequence of the novelty provisions referenced above is that applications for protection of a design filed elsewhere and published in the 12-month period prior to filing of an application for a RCD would not invalidate the RCD. Of course, applications for protection of a design filed elsewhere from 1 October 2002 could potentially serve as a priority right for the new RCD.

April 1, 2003 is the planned launch of the RCD. Applications for a RCD will be handled by a new office in Alicante, Spain. The cost to file an application is expected to be less than $1500, with an additional fee in a multiple design application of $350 for each of the second to tenth design and of $150 for the eleventh and each subsequent design. An
application for a RCD is subject to a brief formalities examination only and registration certificates are expected to be issued within three months of filing.

It should not be forgotten that the regulation governing the RCD has already brought into force unitary protection of a design in the European Union (EU) by way of the
Unregistered Community Design. The Unregistered Community Design provides protection for a period of three years from the date on which the design was first made available to the public in the EU. However, this protection extends only to copying of the design, unlike the new RCD.

The new Registered Community Design is a significant change in EU patent protection, one that should be beneficial in protecting a company's new products in one of the world's key markets.

J. Kevin Grogan is a partner with the intellectual property law firm of McCormick, Paulding & Huber LLP in Hartford, Conn. and Springfield, Mass.