Patenting a Design in India 

by  Adv. Rupa K.N  

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design patent

Introduction

A design patent is a legal protection for a manufactured item’s distinct aesthetic attributes. If the product has a distinguishing configuration, surface decoration, or both, a design patent may be obtained. In other words, a design patent protects the decorative design of anything with practical value.

Designs Act, 2000

The Designs Act, 2000 was established to consolidate and amend laws relating to the protection of designs in India. Effective from 12 May 2000, this Act extends across the entire country.

Definition of Design: Under this Act, a ‘design’ refers to the features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two-dimensional or three-dimensional forms. These features must be applied by any industrial process and be visually appealing, judged solely by the eye. The definition excludes any mode or principle of construction, mechanical devices, trademarks as defined in the Trade and Merchandise Marks Act, 1958, property marks as defined in the Indian Penal Code, 1860, and artistic works as defined in the Copyright Act, 1957.

Objectives:

  • To protect new and original designs from unauthorized copying.
  • To regulate and monitor creations, preventing fraudulent activities.
  • To enhance the commercial value of articles by drawing customer attention.
  • To provide legal safeguards to the owners against misuse of their designs.

The Famous Coca-Cola Bottle: The Coca-Cola bottle is a pioneering example of design differentiation in the beverage industry. Patented on November 16, 1915, its unique shape and design have made it instantly recognizable for over a century. This iconic design demonstrates the lasting value of innovative packaging and the importance of securing design patents to protect such distinctive features.

Legal Framework: The Designs Act, 2000 provides a comprehensive legal framework to ensure that the interests of the creators and proprietors of designs are well protected. It specifies the process of registration, rights granted to the owners, and the remedies available in case of infringement.

Origin and Background of Design Patents

The initial patent legislation in India was Act VI of 1856. Its primary objective was to motivate individuals to innovate and create new, useful materials. This law also required inventors to disclose the process or idea behind their inventions. This Act was later revised and reintroduced as XV Patent Monopolies in 1859, granting inventors exclusive rights to sell, make, and use their inventions in India for 14 years from the registration date.

In 1872, the scope of the 1859 Act was expanded to include design protection, and it was renamed ‘The Patterns and Designs Protection Act’ under Act XIII of 1872. This Act was amended to safeguard the novelty of inventions and remained unchanged for about 30 years. However, in 1833, changes in the UK patent laws necessitated corresponding updates in Indian patent laws.

The Indian Patents and Design Act, 1911, replaced all previous legislation. It introduced the role of the Controller of Patents for the first time. After India’s independence, it became apparent that the Indian Patents & Designs Act, 1911, was inadequate and needed replacing with more effective provisions. To address this, the Indian government formed a committee in 1949, led by Justice Dr. Bakshi Tek Chand, a retired judge of the Lahore High Court, to review and reform the patent laws to align with the national interest.

Comparison between Utility Patent and Design Patent

A design patent is not to be confused with a utility patent, which protects an item’s distinct mode of operation or functioning. A design patent protects the appearance of an object. A single product may be granted both a design patent and a utility patent. One of the primary distinctions between the two patents is their duration.

A design patent may last 14 or 15 years, depending on when it is filed. A utility patent is valid for 20 years and requires regular maintenance costs. Maintenance payments are not required for a design patent.

In India, a design patent is a patent awarded on the ornamental design of a practical object. Industrial design rights include design patents. A design patent covers just an invention’s decorative expression, not its functional aspects.

A utility patent would protect the way an item is used and functions. It might not be easy to discern between a design patent and other sorts of property. According to USPTO patent law, a design patent is issued to any individual who has imagined any novel and no obvious decorative design for an object of production. The design patent covers simply how an object appears, not its structural or functional aspects.

A design patent is a patent granted in India for the decorative design of a useful product. Design patents are examples of industrial design rights. A design patent protects just the ornamental manifestation of an innovation, not its useful components. A utility patent would safeguard how an object is used and works. It may be difficult to distinguish between a design patent and other types of intellectual property.

According to USPTO patent law, a design patent is awarded to any individual who has envisioned any original and no obvious ornamental design for an article of production. The design patent only covers the appearance of an object, not its structural or functional characteristics.

Seek Expert Guidance On How A Patent Design Is Different From Utility Design

Difference between Design Patent and Utility Patent

AspectDesign PatentUtility Patent
PurposeProtects the ornamental features of a product, such as shape, configuration, and surface appearance.Protects unique ideas or inventions, granting control over the functionality and operation of the invention.
FocusSolely protects the design and visual appearance of a product.Protects the functional aspects, such as how the product works and is used.
Visual FeaturesIncludes unique visual traits like shape, surface designs, and overall appearance.Involves unique composition, manufacturing methods, or processes.
CostGenerally less expensive to obtain.More costly compared to design patents.
ValueLess valuable as it only covers the outer appearance.More valuable due to its coverage of the product’s functionality and utility.
Granting ProcessTypically granted faster.The granting process is more complex and slower.
ExampleExample: An iPhone design patent for its distinctive features like rounded corners and rectangular screen.Example: A new iPhone app patent covering the functionality and processes.
Design Patent Vs Utility Patent

Difference between Design Patent and Trademark

AspectDesign PatentTrademark
RepresentationDiagrammatic representation of a product.Represents a distinct trade mark, such as a logo, word, or shape.
Protection MethodRequires patent registration to protect a design.Requires trademark registration to protect a distinguishing mark from infringement.
Legal ProtectionProtected under the Designs Act, 2000.Protected under the Trademark Act, 1999.
Design Patent Vs. Trademark

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Filing, Prosecution and Grant of a Design Patent

The registration of a design is covered in depth in Chapter II of the Designs Act, titled ‘Registration Of Designs.’ Sections 3-7 of the Act govern the registration procedure. A design patent application in India should be written in accordance with the Indian Design Act.

The title of the design patent application should accurately depict the product for which the design patent application is being filed. The design patent application should include high-quality images with white backgrounds (preferably) in a variety of perspective views, including front, back, right side, left side, top, bottom, and perspective or isometric views.

The design patent application must be accompanied by a general form for design filing and submitted with the design application drafted to the Indian design office in Kolkata.

If there are no objections, the industrial design application might be granted in as little as four months. In the event of an objection to an industrial design, a response must be written and sent to the Design office, where the examiner will review it.

The product’s design must meet all of the standards outlined in the Indian Design Act of 2000. The examiner scrutinizes the submitted design application against each of the requirements and, if identified, raises a series of queries that might be regarded as objection grounds. Consult a lawyer/ patent agent to apply now.

The inventor must respond and clarify to the Examiner that the objections are invalid, the submitted design application must be allowed based on the inventor’s position, and a design patent may be granted.

Maximize Your Invention's Value With Our Top-Notch Legal Advice & Professional Assistance For Patent Registration And Secure Your Future

Registration Process for Design Patents

Step 1: Application Submission

  • Prepare a design patent application in accordance with the Indian Design Act.
  • Include high-quality images of the design from various perspectives (front, back, sides, top, bottom, and isometric views).
  • Submit the application along with a general form for design filing and the required official fee to the Indian design office in Kolkata.

Step 2: Examination

  • The Controller refers the application to an examiner to ensure the design meets all legal requirements.
  • If any objections are raised, the applicant must respond with clarifications.

Step 3: Publication and Inspection

  • Once the design passes the examination, it is published for public inspection.
  • This allows the public to view and verify the design.

Step 4: Grant of Certificate

  • If no issues arise during the public inspection, the Controller grants a certificate of registration to the design proprietor.
  • The design is then recorded in the Register of Designs, maintained at the Patent Office.

Step 5: Post-Registration

  • The design can be renewed for an additional five years after the initial ten-year validity period.
  • The Register of Designs acts as prima facie evidence in any disputes or legal matters concerning the design.

By following this detailed process, applicants can ensure their designs are properly examined, registered, and protected under the Indian Designs Act, 2000.

Infringement of Design

When a design is registered according to the law, the owner gains exclusive rights to prevent others from copying or using the design without permission. Infringement occurs when a design is used for commercial gain without the proprietor’s consent, leading to brand degradation and loss of market position.

Section 22 of the Designs Act, 2000: This section outlines the grounds for design infringement, including:

  • Unauthorized use or obvious copying of a registered design.
  • Importing or publishing the design without consent.

Notable Legal Cases:

  • Cello vs. Modware India (2017): The Bombay High Court ruled in favor of Cello, stating that the overall visual appeal must be considered when determining design infringement.
  • Castrol India Ltd. vs. Tide Water Oil (2011): The court provided guidelines to identify design imitation, emphasizing that exact duplication is not required for infringement to occur.

Remedies for Design Infringement

If a registered design is infringed, the owner can seek legal remedies, including:

  • Claiming Damages: Financial compensation for the loss incurred due to infringement.
  • Injunction: A court order to prevent further unauthorized use of the design.

Section 22(2) of the Designs Act, 2000, provides the legal framework for these remedies, ensuring that proprietors can protect their intellectual property effectively.

Rules for Getting a Design Patent

To obtain a design patent, the following criteria and legal provisions must be met:

  1. Novelty: The design must be new and not previously published or disclosed.
  2. No Prior Publication: The design should not have been made public in any form before filing the application.
  3. Utility: The design should have practical utility, improving the function or aesthetic of the product.
  4. Aesthetic Value: The design must be visually appealing and judged solely by the eye.
  5. Originality: The design should be an original creation, not resembling any existing designs.
  6. Non-Offensive: The design should not contain any obscene or scandalous material.
  7. Purposeful: The design should serve a functional purpose, enhancing the product’s value or usability.

Additional Legal Provisions:

  • Section 4 of the Designs Act: Prohibits registration of designs that are not new or original, disclosed before filing, similar to existing designs, or containing offensive material.
  • Application Requirements: Applicants must submit high-quality images from multiple perspectives, a complete application form, correct name and address, legal documents, and the required official fee.

By adhering to these detailed criteria and legal provisions, applicants can ensure their designs meet the necessary standards for obtaining a design patent.

Global Status of Design Protection

China: Designs are protected under the Patent Law of the People’s Republic of China without substantive examination. If formal requirements are met, a patent is granted within 6 to 12 months, valid for 10 years from registration.

European Union: Governed by the European Community Designs Regulation and Designs Directive, offering 5-year protection extendable up to 25 years. It covers the appearance, texture, color, and even spare parts of products, requiring designs to be new and have an ‘individual character’. Unregistered designs receive 3 years of protection after public disclosure.

Japan: Design patents undergo a substantive examination and must be innovative. Protected under the Designs Act, patents are valid for 20 years without renewal.

United States: Design patents are examined for novelty and other requirements under Section 171 of Title 35 of the United States Code. The USPTO grants patents valid for 15 years.

Benefits of Getting a Design Patent

There are several significant advantages to registering a design under the Design Act of 2000:

  1. Legal Protection Against Design Plagiarism: Design registration prevents other businesses from copying, reproducing, selling, or distributing items with identical designs to the original.
  2. Extended Validity Period: A design registration certificate is valid for ten years and can be renewed for an additional five years.
  3. Differentiating Selling Point: Registered designs offer a unique selling point, giving products a distinct personality and look, which can be monetized through sales or licensing agreements.
  4. Conserves Creativity: Registered designs are globally unique, meaning they have never been published in any WTO member country and have not been used by anyone in India.
  5. Client Appeal: Registered designs appeal to the general public, judged primarily by visual appearance, enhancing product attractiveness.
  6. Encourages Innovation: The requirement for uniqueness in design registration promotes innovation and healthy competition in the market.
  7. Cost-Effective Protection: Design patents are typically less expensive compared to utility and plant patents.
  8. No Maintenance Fees: Unlike other patents, design patents do not require maintenance fees, reducing the long-term cost of keeping designs secure.
  9. Quick and Easy Granting Process: Design patents are generally granted more easily and quickly than other types of patents.
  10. Brand Security and Market Share: Design patents provide security to the brand, preventing others from profiting from original designs and potentially increasing the market share of the brand.

Patent Design Registration Made Easy! Partner With Our Legal Advisors For Comprehensive Guidance And Protect Your Intellectual Property

Conclusion

The design of an item is what makes it appealing and appealing. As a result, it boosts a product’s commercial worth and marketability. When a design is protected, the owner, i.e., the person or business that registered the design, is guaranteed an exclusive right against third-party illegal reproduction or imitation of the design.

This helps to guarantee that the product’s design is unique to the owner and that the buyer can immediately identify the product’s design as someone’s intellectual property. Get advice on getting a Design Patent now!

Frequently Asked Questions

Q1. What is a Design Patent?

Ans1. A Design Patent protects a manufactured article’s unique appearance (shape, configuration, etc.).

Q2. How is a Design Patent different from a Utility Patent?

Ans2. A Design Patent protects how something looks, while a Utility Patent protects how something works. A product can have both.

Q3. What can be protected by a Design Patent in India?

Ans3. The ornamental design of a practical object, including its shape, configuration, pattern, or ornament.

Q4. How long does a Design Patent last in India?

Ans4. A Design Patent lasts for 14 or 15 years, depending on the filing date.

Q5. What are the requirements for getting a Design Patent in India?

Ans5. The design must be:

  • Novel (new and not previously disclosed)
  • Non-obvious (not an obvious modification of existing designs)
  • Aesthetic (pleasing to the eye)

Q6. How do I file a Design Patent application in India?

Ans6. The application includes drawings, a description, and a filing fee. It’s recommended to consult a lawyer or patent agent.

Q7. What happens after I file a Design Patent application?

Ans7. The examiner reviews the application and may raise objections. You can respond to these objections.

Q8. What are the benefits of getting a Design Patent?

Ans8. Benefits include:

  • Legal protection against copying
  • Extended validity period (up to 20 years)
  • Competitive advantage through unique design
  • Encourages innovation and product differentiation

Q9. What are some considerations for Design Patent applications?

Ans9. The design must not be:

  • Functional (protected by a utility patent)
  • Offensive
  • A trademark or logo

Q10. How can a Design Patent benefit my business?

Ans10. A Design Patent can:

  • Increase brand recognition
  • Enhance product value and marketability
  • Deter competitors from copying your design

A registered design patent can be monetised by selling the design or allowing it to be used under an MOU. To know more about this, get online legal advice.

Adv. Rupa K.N

Adv. Rupa K.N

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Advocate Rupa K.N, with over 24 years of independent practice, specialises in providing legal expertise, advice and guidance to a broad range of customers. Having been practising law independently for several years after doing her B.A. LLB from Bangalore University and PGDM from the National Institute of Personnel Management.

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