A design patent validity may be challenged in a court or a patent office in accordance with the legislation of the country that has registered the same.
The reasons for invalidating a design patent may include:
The failure of an article (appearance) patented to comply with the conditions of protectability;
The availability of features of the design which were absent in the design patent application; and
The patent application was filed with the violation of rights of other persons.
When a patent is cancelled, all the proprietary rights, which arise from it, cease to be effective. Furthermore, a defendant (the holder of such a patent) may be charged with legal costs and the reimbursement of damage suffered by a plaintiff due to exclusive rights, which arise from the protective document,
It should be noted that, as a result of termination of a patent being challenged, another persons, for example, those to whom a patent holder has granted the right to use a patented artistic design solution under a license agreement may also be an affected party.
Reason 1 is the most common ground for patent invalidation. For this, a patent search should be carried out till the date of filing the application or the date of priority of the registered patent for the purpose of revealing the closest artistic design solutions based whereon the patented article does not comply with protectability conditions.
For reason 2, a file history should be examined, which would make it possible to reveal essential features of the design, which were absent in the materials filed with the patent office.
Regarding reason 3, an interest party should prove that the registration of the patent violates his/her rights. For example, the right holder was not entitled to file an application for the registration of the design for he/she created it within the framework of employment relations and the prior right to file the application was vested with the employer, or the designer (author) of the design transferred it to the customer under a design contract.
In any case, the issue of invalidating a design patent should be treated extremely responsibly and deliberately. Inventa’s experts will help you to develop alternatives of actions, both strategy and tactics of the protection of your rights and legitimate interestsPrint