Unexamined design patents are causing havoc in Europe's online markets such as Amazon and eBay

Is the EUIPO unintentionally supporting illegal seller conduct on Amazon’s European markets through its fast and cheap design patent protection? Can anything be done to better protect honest sellers?

The European Union Intellectual Property Office offers a fantastically fast and inexpensive way to secure design patent protection in Europe. For the relatively meagre official fee of 350 EUR, an applicant can protect its design across the whole of the European Union. The process is fairly straightforward and provided you, or your attorney, files correctly, you will usually receive the notification of registration by the next day. As a legal customer offering, the EUIPO’s registration practice is second to none in terms of cost and time efficiency.

The timely registration of design patents in Europe is made possible because the EUIPO does not perform examination on the substantive grounds of novelty and individual character despite the text of Article 3 of the directive on the legal protection of designs reading: “A design shall be protected by a design right to the extent that it is new and has individual character”.

These unexamined, cheap and fast monopoly rights are having hugely detrimental impacts on legitimate sellers on Europe’s online market places such as Amazon and eBay. A common practice for unscrupulous market players is to bring down competitors using EU design rights obtained for someone else’s existing design. The process of taking down a competitor’s products using the ill-begotten design right is easy through online IP complaint procedures. The appeal procedure to get a listing back online is far less simple than the take-down procedure as it requires investigations into invalidity of the asserted design right and a non-infringement analysis. The robot/person reviewing the appeal at the online IP complaints department is often unsympathetic to such arguments or is not sufficiently knowledgeable on EU IP law to take the required decision to place products back online. It seems that a prevailing presumption of validity of the design patent exists, but such a presumption is wholly unjustified for unexamined design rights.

It happens that genuine sellers are left in the absurd position of having been the first to market for a particular design for a product and having been taken offline by a late comer willing to exploit the EUIPO’s largesse in issuing Europe wide monopolies.

The EUIPO does offer a revocation procedure, but it can take months to get a decision on revocation. Days offline is often too much in commodity markets where profit margins are small and customer credibility is paramount.

One solution would be to offer a preliminary invalidity procedure in which the EUIPO preliminarily opines on validity of a design right upon request (and perhaps payment of an opinion fee). Whilst Amazon (for example) sometimes does not give credence to attorney validity opinions, they would surely be persuaded by an opinion on invalidity from the rights giver - the EUIPO. The opinion should be obtained as quickly as the design right is granted, i.e. in 1 or 2 days. In many cases, invalidity of the design right is as plain as day and would not need a deep investigation.

Does anyone have other solutions to this problem? Are you seeing similar issues with online IP complaints procedures?

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