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Crocs haven’t lost their EU patent. They never had one in the first place

Crocs Inc. have been misreported in many news articles recently as losing their EU patent rights. This isn’t quite right.

It is true that they have been fighting hard without success for the past several years to retain intellectual property protection in the EU for their iconoclastic footwear.  But this has been via a European Registered Design, and not a patent.  (Also, there is no such thing as an “EU patent”).

Register your rights first

Crocs are struggling with keeping their EU Registered Design alive because evidence demonstrates that the product was disclosed prior to the filing of their Registered Design.

The golden rule is that you must register your rights before disclosing them, and this applies to both design and patent protection.

However, these are two very different intellectual property rights.

Designs

A Registered Design effectively protects the way an article looks.  This is relatively narrow form of protection, being limited to the specific shape and appearance of a product.

Registered Designs are useful for preventing counterfeits, but their narrow scope means that this protection can be easily circumvented simply by making an article look different to what is shown in the drawings of a Registered Design.

Patents

On the other hand, patents protect more conceptual aspects of a product or process.  The scope of protection isn’t restricted by drawings, but rather is set out in the wording of the “Claims” of a patent.

As words, rather than pictures, are used to outline the scope of protection, this means patent rights can be broader and more powerful intellectual property rights than designs.

What if Crocs did have a patent?

Well, actually Crocs did file a patent application which included Claims to “breathable footwear” having “liquid conductors formed around each ventilating hole” – so as to divert water away from the inside of the footwear.

It even got to the stage where the patent was deemed allowable by the European Patent Office.  But then Crocs failed to take the next steps to validate the patent.  What happened?

From the file history, it looks like they lost interest sometime in 2013.  This was around same time that their Registered Design received its first challenge, and evidence was produced that Crocs had disclosed their design to the public prior to their IP registrations.

One theory is that this evidence was compelling enough to be a clear validity challenge to the patent rights, and so perhaps Crocs decided that the patent rights were not worth fighting for.  Regardless, the important message stands:

Register your IP rights before you disclose your ideas!

For more information on this please contact Kaya Elkiner.