Protecting Industrial Designs?Is the U.S. Behind the World?

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Author	Donna P. Suchy
Position	Donna P. Suchy is chair of the ABA Section of Intellectual Property Law. She is managing counsel, intellectual property, at Rockwell Collins in Cedar Rapids, Iowa. At Rockwell Collins, she is responsible for developing and implementing patent corporate strategy, litigation, due diligence, and advising corporate management on the legal and...
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Published in Landslide® magazine, Volume 9, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

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The protection of industrial designs

has long been a popular sub-

ject for intellectual property (IP)

experts, legislators, actual designers, and

those that employ them.1 Some argue

that protecting industrial designs will

foster more creativity and innovation.2

Others believe that extending or expand-

ing protection will harm our economy,

causing consumer goods prices to rise.3

Not surprisingly, with such diverse

views, U.S. lawmakers have been reluc-

tant to change the current laws as they

apply to protecting industrial designs.4

As a result, many feel that the United

States does not adequately protect indus-

trial designs, especially when compared

to protections offered by other nations.5

What Is an Industrial Design?

An industrial design is the ornamental or

aesthetic aspect of an article. The design

may consist of three-dimensional fea-

tures, such as the shape or surface of an

article, or of two-dimensional features,

such as patterns, lines, or color.

From technical and medical instru-

ments, architectural structures, vehicles,

housewares, and electrical appliances to

textile designs, watches and jewelry, and

leisure goods—industrial designs are

applied to a wide variety of products of

industry and handicraft. Industrial designs

enhance a product’s attractiveness and

appeal, adding to its commercial value

and increasing its marketability.

What Options Do American

Innovators Have?

1. Copyright if there is an exact copy;

2. Trademark and trade dress to pro-

tect source; or

3. Design patents.

So How Does the Rest of the

World Protect Industrial Designs?

Other countries have a registration pro-

cess and/or modes for protecting utility

design patents.6 Industrial design pro-

tection primarily focuses on protecting

an aesthetic aspect, i.e., protecting the

“look” of an article, and does not protect

any technical features of the article to

which it is applied. Many of the world’s

iconic products are good examples of

items whose “look” is protected: Apple

Inc.’s iPhone, chairs by Charles and Ray

Eames, and Volkswagen’s Beetle.

Protection of industrial designs helps

to ensure a fair return on investment. An

effective system of protection also ben-

ets consumers and the public at large

by promoting fair competition and hon-

est trade practices. Further, protecting

industrial designs helps economic devel-

opment by encouraging creativity in a

country’s industrial and manufacturing

sectors while contributing to commer-

cial expansion and increasing export

of national products. To qualify for

protection under most national laws,

an industrial design must be new and

original. Novelty or originality is deter-

mined by comparing the applied-for

design to products or protected designs

already in existence. The Hague Sys-

tem for the International Registration

of Industrial Designs, administered by

the World Intellectual Property Organi-

zation (WIPO), provides a mechanism

for registering designs in countries and

intergovernmental organizations that are

members of the Hague Agreement, cur-

rently numbering 60 contracting parties.

The system allows owners of industrial

designs to obtain protection in several

countries by simply ling one applica-

tion with the International Bureau of

WIPO, in one language, with one set

of fees in one currency (Swiss francs).

An international registration produces

the same effects in each of the desig-

nated countries, as if the design had been

registered directly with each national

ofce, unless protection is refused by the

national ofce of that country.

The Hague System simplies the

management of an industrial design

registration, because it is possible to

record subsequent changes or to renew

the registration through a single proce-

dural step with the International Bureau

of WIPO. While WIPO provides a sin-

gle ling system among 60 contracting

parties, there are still many differences

in national ling regulations among

WIPO’s 186-nation membership, and a

proposed new treaty aims to harmonize

many of them by 2018. International

ling regulations for patents and trade-

marks are already covered by similar

treaties, overseen by WIPO.

What Can We Do to Keep Up

with the World?

Over the years, the United States has

taken a lead in enacting policies and laws

that protect the fruits of entrepreneurial

innovators. A few years ago, the United

States adopted the America Invents Act

(AIA), which redenes and protects inno-

vative entrepreneurial rights, provides

ways to obtain low-cost applications, and

provides quicker access and results with

respect to courts and administrative agen-

cies, like the United States Patent and

Trademark Ofce (USPTO).

Unfortunately, we are letting those

very same innovators down in the cur-

rent, fast-paced, visual-orientated world.

Other countries are adapting to cur-

rent needs of entrepreneurial innovators

by putting in place new ways to protect

DonnaP. Suchy is chair of the ABA Section of Intellectual Property Law. She is managing

counsel, intellectual property, at Rockwell Collins in Cedar Rapids, Iowa. At Rockwell Collins, she

is responsible for developing and implementing patent corporate strategy, litigation, due diligence,

and advising corporate management on the legal and operational implications of IP laws.