[Patent Talk] Product Development Stages and the Timing of Design Applications

This is a column contributed by our patent attorney Taeyoung Lee to Etoday on October 6, 2021. It discusses in detail the timing of design applications.

[Patent Talk] Product Development Stages and the Timing of Design Applications

As awareness of the importance of design rights grows, design applications are increasing not only among large corporations but also among individuals and small and medium-sized enterprises. When filing a design application, it is important to secure an appropriate scope of rights by using tools such as partial designs, but choosing when to file is also a very important issue. As with patents, a design cannot be registered if an identical or similar design was disclosed before filing. Ultimately, the most important thing is to make sure the design is not disclosed before the application is filed.

Therefore, as a basic rule, every design throughout the product development process, from the prototype to the final design, should be kept undisclosed. In particular, with the growth of the internet, designs are sometimes disclosed on blogs or YouTube, which can make registration impossible, so care is needed.

<Apple's iPhone design patent US D618,677>

Of course, under Article 36 of the Design Protection Act, registration is exceptionally possible if the application is filed within one year from the date of disclosure with a so-called "claim of exception to lack of novelty." Even so, care is needed, because in countries such as China, where the exception is limited to disclosures at certain exhibitions and the grace period is six months, a foreign application may be impossible or, if possible, must be filed within six months from the first disclosure. In practice, therefore, I recommend not disclosing the design before filing rather than relying on the grace period provision.

Another point to note is the case where both a patent application and a design application are filed. A design application is generally filed at the final stage of development, when the product specifications are almost finalized, whereas patent applications are often filed in the early or middle stages of development. This is because patents often focus on the function of the product, so as long as the function is the same, an application can be filed before the final design is settled. A design, by contrast, is finalized only after mass-producibility has been verified, so it becomes ready for filing only just before the product launch.

When a patent application for a product is filed first and a design application for the same product is filed later in this way, the earlier-filed patent application...

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LNB IP Law Firm