DESIGNS AND MODELS: WHETHER TO PUBLISH OR NOT
Designs and models are becoming increasingly important to your company’s intellectual property strategy: they help protect the appearance of your products in two dimensions (designs) as well as in three dimensions (models).
It can take several months between registering a design or model and launching a product, and can take even longer in the event of a prior or simultaneous patent application. This delay has made companies ask themselves what strategy to adopt when registering a design or model application: should one ask the office to defer its publication?
In France, at the community and international level through WIPO, a design application results in a very rapid publication (three to four months on the average in France and at the community level). Moreover, it is sometimes interesting and even advisable to defer the publication.
The design application can be deferred 30 months in France and at the community level. At the international level (via WIPO) it is possible to postpone publication for the same period for the contracting parties that made the declaration and designated in the international registration. Otherwise, the period of deferment is not allowed or is reduced to six months.
If one wishes to extend its design abroad, while maintaining the adjournment of the publication in order to delay the disclosure as much as possible, it faces an additional difficulty as few countries accept to postpone the publication.
To optimize the application strategy, we recommend proceeding with the first application and to defer its publication, either in France or at the community level or at the international level by claiming France and/or the community design. Based on this adjourned design, we recommend waiting as long as possible for foreign extensions while respecting the six-month priority period. Extensions can then be performed with deferment of publication in countries that allow it and without deferment in most of the countries that do not allow it. In these countries, the approach will be to delay the review and consequently the publication. It is possible, from the date the base design was filed, to try to gain 15 months, which is considerable and this even if we do not attain the 30 months in the countries that accept such a postponement.
This strategy also presents another advantage: if an extension in one or several countries has been omitted before the priority deadline, it is then possible to file, without claiming any priority in the country omitted, by adopting the same strategy as mentioned above in terms of deferring the publication.
With respect to competition and counterfeiting, this strategy allows one to have a certain advantage and to be protected from the competition and counterfeiters so that counterfeit products do not appear when the original application is filed and before the launch of the genuine product.
LAVOIX’s legal team is at your service to refine your designs and models strategy.
Contact : firstname.lastname@example.org
Publication date : March 2016