Effective Ways to Register Industrial Design in the United States

In the United States, there are many advantages in the fields to increase the number of industrial design applications every year. The U.S. is one of the leading countries in technology and innovation, with industries such as information technology, electronics, software, artificial intelligence, robotics, and advanced manufacturing thriving. This creates a favorable environment for the application of new technologies to industrial designs, creating breakthrough and advanced products. The US is the world’s largest consumer market, with a diversity of consumer needs and preferences. Industries such as fashion, home appliances, toys, sports equipment, and personal care products need to continuously innovate industrial designs to attract customers and compete in the market. The American auto industry has a long history and is an important contributor to the economy. American automakers have always focused on industrial design to create unique, sporty and modern models that meet the needs of consumers. In addition, a strong intellectual property protection legal system, abundant investment capital and a team of creative people are also important factors promoting the development of industrial design in the United States. Therefore, more and more individuals and organizations want to register industrial designs in the US, Viet An Law would like to guide customers through the article below.

Legal Basis

• S. Code, Title 17 – Copyright (17 U.S.C., as amended to Public Law No. 117-263)

Definition of industrial design in the United States

In the United States, industrial design is defined as the professional service of creating and developing concepts and specifications that optimize the functionality, value, and appearance of products and systems for the common benefit of both users and manufacturers. The main contents of this concept include:

• Focus on Mass Production: Industrial designs are primarily concerned with products intended for mass production, ensuring they are both functional and aesthetically pleasing.
• Solve problems creatively: Industrial designers use their creativity and technical knowledge to solve problems related to form, function, usability, and manufacturability.
• User-centric approach: Industrial design prioritizes users’ needs and preferences, in order to create products that are intuitive, exciting, and enhance their lives.
• Collaboration: Industrial designers often work as part of a larger team, collaborating with engineers, marketers, and other professionals to bring products to market.

Conditions for registering an industrial design in the US

• Decorativeness: The design should be decorative, meaning it enhances the aesthetic appearance of a functional item. The design cannot be decided only by the function of the item.
• Novelty: The design must be new. This means that it cannot be identical to any previously known design, regardless of the field of the previous design.
• Non-obviousness: The design should not be an obvious modification of existing designs. A person skilled in this field should not find the design to be obvious compared to the previous designs.
• Feasibility: The design must be described in sufficient detail in the application for an industrial design patent to allow a skilled person in the field to create and use the design.
• Object Eligibility: The design must be applied to a “product,” which is a broad term that encompasses the manufactured items, the composition of the material, and their improvements.

Types of industrial designs that can be registered in the United States

In the United States, the only type of industrial design that can be officially registered for protection is  a decorative design for a functional item. This is done through design.

By design it protects the decorative appearance of the product, not its structural features or functions. This means that the unique shape, configuration, or surface decoration of the product can be protected, but not how it works. Here are some examples of designs that can be registered:

• Shape of the bottle
• Patterns on fabric
• Configuration of the seat
• Decorate on a piece of jewelry
• Graphical user interface of a computer program

Industrial design registration dossier in the US

• Application Form: The application form includes the following information:
  • Name, address, nationality and contact information of the applicant (and representative, if applicable);
  • Title of industrial design;
  • Specifies the products to which the style will be applied (Product Type).
  • International Classification Code for Industrial Designs (Locarno Classification).
• Representative image of the style:
  • Drawings, photographs, or other graphic images of the design.
  • These images need to clearly represent all angles of the style (front, back, side, top, bottom, perspective, etc.).
  • A maximum of 7 images can be submitted.
• Priority documentation (if applicable): If a priority claim is from a previous application filed in another country, the applicant will need to submit a certified copy of the previous application.
• Power of attorney (if applicable): If the applicant files through a representative (e.g., attorney or intellectual property representative), the applicant will need to provide a power of attorney that allows them to act on behalf of the applicant.
• Other documents, if any:
  • Copyright claim (if the applicant is not the creator of the design).
  • The transfer document (if the rights to the design have been transferred).

Fees for registering industrial designs in the United States

Currently the basic filing fee for a design patent application is:

• Small Business: $90 (file electronically) or $180 (file by mail)
• Microbusiness: $45 (electronically filed) or $90 (mail-in)
• Large Enterprises: $180 (electronically filed) or $360 (mail-in)

However, additional fees must then be paid during the patenting process, such as:

• Degree Fee: $0 (if filed electronically) or $100 (submitted by mail)
• Maintenance fee: Due at 3.5, 7.5 and 11.5 years after the date of the patent.

Industrial design registration in the United States under the Hague Convention

What is the Hague Agreement on the Industrial design registration?

The Hague Agreement on the Industrial design registration (referred to as the Hague Agreement) is an international treaty administered by the World Intellectual Property Organization (WIPO). This agreement provides an international registration system for industrial designs that makes it easy for individual designers and businesses to protect their designs on a global scale.

Benefits of registering industrial design protection through the Hague Agreement

• Simple: Instead of having to file an individual application in each country, the applicant only needs to file a single application in one language (English, French or Spanish) and pay in one currency (Swiss franc) to apply for protection in multiple member states.
• Savings: Significantly reduces costs compared to filing individual applications in each country.
• Centralized Management: Easily manage the applicant’s portfolio of registered industrial designs through a single system.
• Flexibility: The applicant can choose the countries in which you want to protect your industrial design.

Dossier of registration for protection of industrial designs under the Hague Agreement

A dossier for registration of an industrial design under the Hague Agreement includes the following documents:

• International Registration Declaration:
  • The applicant completes the application according to WIPO’s prescribed form in one of three languages: English, French or Spanish.
  • In the application, it is necessary to clearly specify the application for protection under the 1999 Document or the 1960 Document of the Hague Agreement.
  • List the countries in which the applicant wishes to protect his industrial design.
• Images or drawings of the industrial design: the image needs to clearly and fully show the perspectives of the industrial design that the applicant wants to register. The applicant also needs to pay attention to ensuring the quality of good and clear images or drawings.
• Documentation of payment of fees: The applicant notes that the international registration fee should be paid in accordance with WIPO regulations.

Some questions in the process of registering an industrial design in the US

How long is the term of protection of an industrial design?

The term of industrial design protection in the US is 5 years from the date of filing, which can be extended 4 times, each time for 5 years (up to a total of 25 years).

Do I need a lawyer to register an industrial design?

While not required, having a representative attorney can help you ensure that your application is properly prepared and increase your chances of a successful application.

Are industrial designs protected in other countries?

The registration of an industrial design in the United States is only valid in the United States. If you want to protect your design in other countries, you need to file an application in those countries or through the Hague International Design Registration System.

If you want to apply for industrial design registration, please contact Viet An Law Firm for the most effective support.