Salvaging design protection from a PCT patent application

There are occasions, however, when the drawings from a PCT patent application pertaining to an idea may themselves be commercially valuable in their own right. This could be, for example, because they relate to a graphical user interface (GUI) which is intended to be commercially sold for implementing the proposed idea, or because they relate to the appearance or shape of a product related to the idea which is intended to be released on the market and which has a distinctive design or shape.

In these instances, supplemental design registration protection for these visually distinctive features from the drawings of the PCT patent application would have ordinarily been best protected with a separate registered design application(s) which was made around the same time when the first patent application relating to the idea was made.

There are times, however, when such an initial, supplemental, registered design application may not have been made at the same time as pursuing the initial patent protection, for one commercial reason or another. In this event, and particularly when the PCT patent application has been subsequently published, there is sometimes the perception that any subsequent possibility to obtain valid design registration protection for content otherwise disclosed in the drawings from the PCT patent application may be irreparably lost.

Whilst in some territories around the world this perception may be true, it is to be noted that some jurisdictions covered by a PCT patent application, specifically the USA at least, allow for design protection to be split out from any patent application pursued in that jurisdiction, to allow both design registration, and utility patent, protection to be achieved.

Indeed, and at least as far as the USA is concerned, it is possible to pursue design registration protection through the filing of a design patent application which is pursued off as a continuation from any initially filed US utility patent application pursued off from the PCT patent application. This thus allows the potential salvaging of design protection in the USA in instances where there was not an initially pursued registered design application family to work from.

Noting the above possibility, and particularly where an initial decision is made to not pursue any registered design protection for subject matter otherwise disclosed in a PCT patent application, there can be some slight additions made to the PCT patent application during its initial preparation phase to better keep the design-possibility door open in PCT jurisdictions which allow for this, in case a subsequent decision is made to re-visit such design protection later on - well after the PCT patent application has published.

With this in mind, when preparing drawings for a PCT patent application which relate to a 3D product where design protection may subsequently be needed, it can be helpful to ensure that the drawings from the PCT patent application show the given product from all sides. For example, if the proposed drawings contain a first perspective view showing the front, left and top sides of a given product, it can also be helpful to consider adding a second perspective view which shows the remaining rear, right and bottom sides of the product. Similarly, if there are extra orthographic views relating to the product which are available for inclusion as well (e.g. a top view, or a front view, of the product), including these extra orthographic views as supplemental Figures in the PCT patent application can be incredibly beneficial.

Similarly, and in so far as there might also be any potential confusion as to what sides of a product are shown in any proposed drawings from the PCT patent application (for instance, where the drawings relate to a product which has an element of symmetry to it), it can also be helpful to also explicitly note in the brief description of the Figures of the PCT patent application which sides of the product are being shown in these drawings, such as “Figure 1 shows a first perspective view showing a front, left, and top sides of an XXX”.

In this way, these additions and clarifications to the specification of the PCT patent application can better avoid obtaining (potentially irreparable) objections which might arise from a subsequently pursued design patent protection in those PCT territories which allow for this, from not otherwise having sufficiently showed the detail of the product from all sides, and/or in a way that is expressly clear enough.

It can also be beneficial to consider adding some supplemental language in the description of the PCT patent application (for example,at the end of this description) which makes it explicitly clear that design protection may be pursued later on in PCT jurisdictions which expressly allow for this. Such language might also make it clear that the disclosure of the PCT patent application intends for any solid line, or combination of solid lines, shown in the drawings to be potentially shown in dotted lines instead (noting a dotted line in the context of design registration protection is often understood as meaning that protection for that line is not sought, such that it is only the portions shown in solid lines for which design protection is claimed). Adding this language might then provide a little more scope, and basis, for trying to change a solid line from the PCT drawings to a dotted line later on, if it turns out that protection for that portion of the drawings is not desired from a design registration perspective.

From the US perspective as well, additional language which might also be included in (the final parts of) the description of the PCT patent application might be US design patent claim language, to again better convey the intention that the PCT patent application may ultimately be used in such a US design patent application later on. For example, and in so far as the drawings of the PCT patent application might relate to a particularly distinctive design of toothbrush, and/or a distinctive toothbrush handle, one might consider adding supplemental language in the description which recites that the disclosure of the PCT patent application could appreciably also cover “the ornamental design for a toothbrush, and/or a toothbrush handle, as shown and described” (which is language along the lines of a claim from a US design patent). In this way, if a US design patent application is then ultimately sought later on, there is at least some language in the PCT specification as filed which provides reasonable basis for such an intention.

To be clear, attempting to salvage design registration protection from an initially pursued PCT patent application is not as straightforward as obtaining corresponding design registration protection from an initially pursued, separate, registered design application which was made at the same time when any first patent application was made. Accordingly, seeking design registration protection via this latter route would usually be much more advisable, to the extent possible.

Still, for those missing that initial opportunity, and finding themselves in a subsequent position of wanting registered design protection later on, bear in mind that potentially all is not lost! Some design registration protection may still be possible from a PCT patent application in those PCT jurisdictions which allow for this, such as the USA at least, depending on how the PCT patent application has been prepared!