Q: I want to know whether my US design patent can be protected in EU country or Canada?

I also want to know if someone sold products with my design before my design patent certificate registered, can I accuse him as infringement after my patent registered? If not, what else can I do to stop him selling products with my design patent?

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: This question merits a patent attorney sitting down with you to go over the particulars so that you get the right answer.

Here are some general points that may help you get ready for this discussion.

1) Your design patent cannot stop someone from making something that they were making or selling to the public before you filed your design patent application. If your design patent reads on something that existed before you filed the application, then your design patent is invalid.

2) If you filed your design patent application and then the person started to sell products to the public that had your same ornamental design (perhaps after seeing your product), then you can stop that person from continuing to make or sell products that would infringe your ornamental design in the United States with your United States design patent.

3) There was a window of time when you could have filed your design patent application in other countries while claiming priority to your US patent application. That window is just six months for design patents so I suspect that you may be outside of that window if you have already received a US design patent.

4) Finally, keep in mind that your design patent prevents someone from selling a product with essentially the same ornamental appearance as your design patent. It does not prevent someone from selling a product with the same useful features. So a design patent on a can opener merely prevents others from a confusingly similar look-alike product not one that looks different but provides the same features.

I hope this helps.

Kevin E Flynn

Robert Philip Cogan agrees with this answer

1 user found this answer helpful

Karima Gulick
Karima Gulick
Answered
  • Patents Lawyer
  • Irvine, CA
  • Licensed in California

A: 1) Can you protect your US Design Patent in the EU or Canada?

This will depend on when you filed your design patent. Typically for design patents, you have 6 months from the date of filing in order for you to file in other countries and claim priority to your US date.

If your product will be selling in multiple countries, you can also file for an "international design application" which can save you money down the road. But again, this will all revolve around your date of filing.

If the 6 months has already passed, can you make changes to your design? You can broaden or narrow what you are claiming in your designs or make alterations to your current design.

2) I also want to know if someone sold products with my design before my design patent certificate registered, can I accuse him as infringement after my patent registered?

As Mr. Flynn mentioned, if you filed for a design patent on a product that was already in public use, your patent is invalid. Did they change their designs after you filed for your patent?

3) If not, what else can I do to stop him selling products with my design patent?

If the infringers started selling your design after you filed for your patent, and they are in fact selling the same design, then you can definitely stop them or license your designs to them.

As always, please read the disclaimers below.

1 user found this answer helpful

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