United States – Registered Design
Opposition
There is no procedure for opposition in the US.
However, at any time during the life of a US Design Patent, a member of the public can contest validity by paying a substantial government fee and presenting a Request for Re‐Examination based on prior art citations of patents and other printed publications that were not previously considered during the examination.
“Small Entity”
There are currently no government maintenance fees for US Design Patents. During the pendency of a US Design Patent Application, a government fee reduction of one‐half is obtainable when a Design Patent Application is pending. A “small entity” is e.g. an individual, a non‐profit organisation or a small business whose number of employees, including all of its affiliates, does not exceed 500 persons. Also, a pending Design Patent Application must not be licensed in the US to an entity having more than 500 employees in order to qualify for the small entity status.
Working
Working of a US Design Patent is not compulsory.
Marking
To provide against infringement by competitors and to secure the right to damages in cases of infringement, the product (where possible), the packing, the directions for use and the advertising material should be marked “US Patent No. Des. XXX XXX”. If the product is protected by several design registrations, all registration numbers should be stated. In case there is not sufficient space on the product, the word “Patented” will suffice, but the packing etc. should then be marked with all the numbers in full. This may be a suitable option also when the product is protected by design registrations in several countries, in which case the packing is marked with information on the different countries and registration number, e.g.
- Design Reg. Sweden No. XX XXX
- Denmark XXXX XXXX
- Germany MXX XX XXX.X
- France XXX XXX
- US Pat. Des. XXX XXX
Registered owner
The consequence of not recording changes in title varies from country to country. In some countries, it is an absolute condition that the entity claiming protection is the same entity that is recorded as owner in the national registry. In other countries failure to record changes in title may make it more difficult, for instance, to file renewal documents or to file lawsuits against infringers. Thus, we highly recommend that changes of name and assignments are duly recorded. Please contact your consultant at AWA for more information.
Licensing
It is possible to license a Design Patent in the US. There are certain requirements to be met. Please contact your consultant at AWA for more information on how to create a valid licence in the US.
Pledging
It is possible to pledge a Design Patent in the US. There are certain requirements to be met. Please contact your consultant for more information on how to create a valid pledge in the US.
Watching
The registration of an identical or similar design can be revoked only by your actions, typically by means of a cancellation action. Please feel free to contact us when in doubt.
We recommend that you use our watching service in order to improve your chances to detect similar designs that may have been registered despite the existence of your registered design.
Alterations in Laws
Please note that these requirements may change over time and AWA Sweden AB does not assume any responsibility to keep you updated of any legislative or other amendments. In order to provide yourself with updated and current information, do not hesitate to contact your consultant at AWA.