Design Patent Law – It makes sense to file a separate part of a design as a design patent in Germany and the EU (01/2013)

The plaintiff filed within a multiple design patent application the complete form of a pencil. The pencil consisted of a spiral at the upper part of the pencil and an additional holding clip. In addition, the plaintiff registered the upper part of the pencil showing the spiral without a clip. The defendant filed a legal action against the use inter alia of the pencil design.

The question whether the overall design of the defendant’s pencil is an infringement of design No. 1 was left open by the Federal Supreme Court. The Court rather considered the spiral area of the defendant’s design probably to be a design patent infringement of design No. 2 and referred the case back to the Higher Regional Court. This case is of high interest since the Federal Supreme Court argued that if a separate design for a part of a product has been registered (here: an intermediate portion of a pencil, design No. 2), then it has to be compared with the respective part of the defendant’s products, i.e. only the two spiral areas have to be compared. The Federal Supreme Court also argued that the additional holding clip in the defendant’s product does not have to be taken into account when comparing the two spiral areas of the pencil since the spiral area of the pencil only has to be compared with the spiral area of the defendant’s pencil.

Of course, the decisions in such design patent cases always depend on the specific facts of a legal case, but in this legal case the German Federal Supreme Court decided for the first time that an isolated design patent only showing a part of a product can be subject to a design patent right and only has to be compared with this specific part of the design shown in a defendant’s product.

Our advice: When filing a design patent for specific designs or shapes of a product not only the overall design should be filed and details of the design as parts of the design patent, but additional isolated design patents for design elements of the product, which are of importance (such as switches, loudspeakers etc.) should be registered.