In this 2-part insight series, we consider two US design patent decisions from an Australian designs law perspective and discuss strategies for protecting the same design in Australia.
In part one of this insight series we summarised two US design patent decisions issued by the Patent Trial and Appeal Board (PTAB) of the US Patent and Trade Mark Office in which Campbell Soup’s (“Campbell”) challenge to the validity of design patents D621,645 and D612,646 in the name of Gamon Plus, Inc (“Gamon” – see images below) were rejected. We concluded that although Australian courts would have likely arrived at the same PTAB decision, the reasons would have differed.
The PTAB decisions provide a timely reminder about the various factors that should be taken into consideration when preparing and filing Australian design applications. Using this case as a litmus test, we outline below the factors which should be weighed up.
Deciding whether to include the dispenser display's contents:
It’s fair to say Gamon’s approach of including a cylindrical can in each design is one that few Australian design practitioners would implement for a variety of reasons:
- Including the contents (i.e. the can) of the dispenser display would typically make finding infringement more difficult, particularly if its presence changes the visual appearance of the dispenser (e.g. consider a transparent gumball machine).
- Including the contents (i.e. the can) of the dispenser display would likely shift infringement liability from the manufacturer to the retailer or customer (i.e. the place where the dispenser display is loaded (e.g. a supermarket) and not where manufacturing of the dispenser display takes place).
- The design rights owner would likely have to pursue retailers or customers of the dispenser display for infringement, and not the dispenser display manufacturer. This is often undesirable from the design rights owner’s perspective because they and the infringer may share the same customers.
- Changing the contents of the dispenser may also alter the visual appearance of the dispenser (e.g. loading a different shaped soup can into the dispenser display).
When including the contents might make sense
In distinction to the above reasons for not including the contents of the dispenser, including the contents of the dispenser in a design application may provide an opportunity to protect dispenser displays against having generic structural features, by possessing a unique way of displaying the dispenser’s contents. Including the contents of the dispenser display in the design would emphasise an increased contribution of the contents to the overall visual appearance of the dispenser display.
Identifying the product
In an Australia design application, the applicant must identify the product in relation to which the design is sought to be registered.
Because Australian designs law does not recognise partial designs, strategic selection of the product name may allow the design applicant to ‘adjust’ or ‘tailor’ the prior art base against which the design is assessed.
For example, if it was decided that the contents should be included in representations, the project might be entitled: Gravity Feed Dispenser Display with Container Displayed.
Simultaneously filing patent and design applications
The US patent system allows a design application to validly claim priority from a standard patent application as a continuation-in-part application or a divisional application. In fact, this applies to the current situation where the Gorman design patents are part of a complex web of US standard and design patents. US design patent D621,645 was filed as a divisional application claiming priority from US standard patent 6,991,116 which in turn claims priority from US provisional application 60/404,648.
In contrast, Australian design law requires that the priority application must be “an application for protection in respect of the design had been made in a convention country” (S27(1)(b) of the Australian Designs Act).
This means that the priority application must be directed towards the protection of the visual appearance of a product, and not be a patent or trade mark (which typically provide a different form of protection).
It is important that if both design and patent protection in Australia is desired, patent and design applications should be filed simultaneously. Filing a design application after a patent application risks the design being invalidated by the disclosure of the patent application. In addition, an Australian design application cannot claim convention priority from an Australian or overseas standard patent application.
Using broken lines in representations
As stated, partial designs are not currently legislated for in Australia. Because the design must be applied to a product, broken lines (along with a disclaimer) are often employed in Australian design applications. However, when considering the overall visual appearance of the design’s features, whilst the broken lines will probably be given less weight, they are also not likely to be completely disregarded (e.g. by a court).
- Including a dispenser display's contents may provide an opportunity to protect a dispenser display with generic structural features which possesses a unique way of displaying its contents. This approach may however make taking infringement action more challenging.
- Strategic selection of the product may result in an 'adjustment' of the prior art base.
- If design and patent protection are desired, the design and patent applications should preferably be filed on the same day. An Australian design application cannot claim convention priority from an Australian or overseas standard patent application.
- Features shown in broken lines are likely to be given less weight but cannot be completely disregarded when construing the scope of a design.