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If a patent application (PCT/WIPO) is not granted and yet the associated designs before publication were completely original/novel and never appeared in prior art (and yet functionality is linked to those very designs) - has the PCT publication compromised my designs and effectively mean 'others' can take my design as the patent itself failed? or do patent applications automatically provide protection for the associated designs as a matter of course.

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  • Just to clarify: by designs, do you mean the appearance of the product? Also, what do you mean by the patent has failed: a PCT application is never granted after all?
    – Maca
    Commented Nov 16, 2016 at 19:16
  • By 'design' yes I mean the appearance of the product. The patent failed.
    – Gordy
    Commented Nov 17, 2016 at 15:33
  • The application went through the entire process (5 years) failing at National phase.
    – Gordy
    Commented Nov 17, 2016 at 15:52
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    @Gordy: You can still edit your question to clarify since these comments sometimes go away.
    – 3dalliance
    Commented Dec 21, 2016 at 20:05

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If the application is rejected, the claims are likely deemed not patent eligible which means others can use them, but not patent them. (Even if the rejection is based on some other factor, the designs are now in the public sphere, and thus no longer patent eligible.)

If the decision regarding the grant is still pending, the designs are protected in the sense that, while 3rd parties may utilize them, if you ultimately receive a grant, you can retroactively sue for damages.

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By publishing them your designs lose novelty and cannot be protected anymore, unless you can claim priority to the pct application. I am not sure if that is possible, especially after so much time, but you could ask a patent attorney or try to find out another way. Claiming priority is the relevant search term.

For the next time, this should not happen. It is mostly not necessary to include protectable designs in the patent application as you only have to describe the invention, not the design. Then you can either keep the design secret longer or apply for protection independently. Applying for different types of protection at once is a good strategy too, but costs more money.

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Even stolen designs loose patent-ability because the designs nefariously may have entered the public domain. The thought process is that you must have not secured the designs through trade secrecy; therefore they have become open to the public sphere and entered the public domain. BTW ... many times an examiner will reject, reject and final reject but at each stage a cogent rebuttal response to the rejected claims many times will produce a patent although likely narrower.

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    I am not sure about stolen designs losing patentability. Stolen inventions do not per se and I suspect likewise for designs.
    – user18033
    Commented Dec 21, 2016 at 20:35
  • Yes, it is true that any disclosure that enters the public domain by any means will trigger the 1 year countdown to file.
    – 3dalliance
    Commented Dec 29, 2016 at 22:37
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While you may lose the right for patent protection of your designs if a patent is not granted, you may still have some protection under copyright law for the appearance of the designs. Copyright protection occurs upon the creation of an original work to the extent that the work falls within copyrightable subject matter. Publication will not affect the copyright protection. It may be necessary to register the copyright with the appropriate authority prior to pursuing any claim of infringement.

You may want to consider design patent applications on the designs if the original patent application is still pending.

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