Design Patent Application: Certain Amendments

In today's world, product design is no less important than quality. The variety of choice and the availability of homogeneous products from different manufacturers make it necessary to distinguish the goods by means of visual identification. Now, the buyer pays attention not only to the properties of the goods, but also to the packaging, expecting a user-friendly shape, unusual color scheme, and durable material, as all indicators matter and each of them can play a decisive role in choosing the goods. Therefore, entrepreneurs are increasingly focusing on the creation and development of product packaging.

When considering the appearance of goods as an intellectual property, it is important to note the following.

• Several registered results of creative work may be used to identify a product. For example, in a carbonated water bottle, one may find the embodiment of a design invention describing the unusual shape of the container, and a trademark that is placed on the label.
• The same object may be subject to different families of intellectual property and become the subject of cross protection. Thus, if an entrepreneur draws up a package as a design invention and simultaneously registers it as a trademark, both rules will apply to this object.
• On request, the manufacturer has the right to register the result of intellectual activity in one field and not create conditions for cross protection.

Based on paragraph 1 of Article 1352 of the Civil Code of the Russian Federation (Civil Code):

“Appearance of the product of industrial or handicraft production is protected as a design invention”.

The conditions of patentability of such invention are as follows: the object must be new and original in its essential features.

If the creator of the design invention believes that the latter meets the necessary requirements, he or she may file an application for registration of the intellectual property with the patent office. After receipt and acceptance of the documents by Rospatent, the application undergoes two stages of examination followed by a decision on the results of the examination.

Sometimes, there are situations when the applicant wants to change the information in the submitted documents. Further allowed changes after the application is filed are reviewed below.

General provisions on making amendments to the application are contained in Article 1378 of the Civil Code. Allowed changes can be classified by different grounds.

The applicant shall have the right to make amendments at any stage of examination of documents and designations before a decision on the results of the examination, if such actions do not change the application for the design invention in substance.

Upon request of specialists of Rospatent, the applicant may correct and clarify image, description of the claimed design, general view drawing, ergonomic scheme and team chart.

Any of the listed changes are executed in the form of a written request by filling the standard form and providing additional materials/replacement sheets of the application if necessary. It is also advisable for the applicant to give brief explanations of the changes. Documents are submitted in person, sent by mail or the necessary actions are performed through a personal account on the official website of Rospatent or the Public Services Portal of the Russian Federation. The electronic version of document is a priority.

After the application is received by the Patent Office, it shall be considered by the specialists of Rospatent and then the information shall be corrected or the applicant shall be refused to make amendments.