Www.ficpi.org WIPO Global Forum Of Intellectual Property Authorities Geneva, September 17-18, 2009 Panel 5B: Industrial Design Registration Key Design.

www.ficpi.org

WIPO Global ForumOf Intellectual Property Authorities

Geneva, September 17-18, 2009 Panel 5B: Industrial Design Registration

Key Design Issues

Andrew Parkes

Special Reporter (Trade Marks & Designs) FICPI

www.ficpi.org

www.ficpi.org

FICPIInternational Federation of Intellectual Property

Attorneys, established 1906

• Membership solely of intellectual property attorneys in private practice

• About 5,000 members in 86 countries/regions

• Broadly representative of the free profession

• Purpose: to serve interests of members and their clients

www.ficpi.org

FICPI and Designs

• Long-standing interest in field of design protection

• Dedicated working group on designs

• Rome Symposium 2001

• Active in the SCT

• Regards design registration as important form of protection for innovation

www.ficpi.org

Enhancing Design Protection Internationally- Difficulties for Users

• Laws and practices differ around the world

• 56 members of the Hague System, of whom

• 35 are members of the Geneva Act

• But differences in national/ regional laws affect design protection whether or not the Hague System is used

www.ficpi.org

Key Design IssuesSubstantive

• No international minimum requirements for subject matter that can be registered

• Ideal: a broad definition of designs• Designs no longer strictly “industrial”• European Community law defines ‘product’

as any industrial or handicraft item• But Paris Convention, Hague Agreement

and TRIPs all refer to “industrial designs”

www.ficpi.org

Definition of ‘Design’European Community law

• ‘design’ means the appearance of the whole or a part of a product

resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation

• CDR Art. 3a; HD Art. 1a

www.ficpi.org

Definition of ‘Product’European Community law

• ‘product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs

• CDR Art. 3b; HD Art. 1b

www.ficpi.org

Patentable designsUS law

• ‘Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor …’ 35 U.S.C. 171

• Basic difference in approach to graphic symbols, for example. Overlap with trademarks in Europe.

• Computer icons: protectable as 2-dimensional design or as part of a display screen? Or not at all? New FICPI Survey to be carried out.

www.ficpi.org

Interpretation of Design Registrations

• Desirable to have consistent interpretation of the scope of rights granted– Effect of claim– Effect of Statement of Novelty– Effect of description of characteristic features– Effect of markings on drawings, e.g dotted

lines, shading

www.ficpi.org

Effect of Classification

• Desirable to have consensus on whether the scope of protection is limited to:– The product(s) indicated in the application– Products in the same Locarno class or sub-class– Any products whose design produces a similar

overall impression

• What products infringe?• What products are relevant to novelty?

www.ficpi.org

Functional features

• Desirable to have consensus on functional features– To what extent may they be registered?– To what extent are they protected if design is

registered for article as a whole?

www.ficpi.org

Grace Period

• Many countries/regions allow disclosure in certain period of time before filing or priority date, in certain circumstances, without affecting novelty

• But exceptions and varying time periods are traps for users

www.ficpi.org

Key Design IssuesFormalities

• Discussed at the SCT 20th and 21st Sessions

• Next discussion at the 22nd Session

• Looking for possible areas of convergence in design law and practice

• Practical importance for users to see these accepted

www.ficpi.org

• Scenario: Applicant filing a first application for protection of a design

• Hoping to file around the world with Paris Convention priority

• Using Hague Agreement (Geneva Act) or national applications

• Wants to be able to use one set of drawings for all applications

Reproduction of the Design(Representations)

www.ficpi.org

Issues regarding Representations

• Maximum numbers of views allowed• Obligatory views• Acceptability of dotted or broken lines to

represent matter that is not part of the design

• Acceptability of shading to distinguish the design from parts of the article that do not contribute to the design

www.ficpi.org

Issues regarding Representations (2)

• Use of colour

• Photographs

www.ficpi.org

Multiple Design Registrations

• Number of designs allowed in one application

• Common characteristics– Same Class– Same distinctive character– Unity of design, unity of production, unity of

use

• Variants

www.ficpi.org

Novelty Issue for Designs

• Design must be novel for valid protection

• Grace period in some countries/regions but not all

• Grace period generally for “own” disclosure or bad faith disclosure only

www.ficpi.org

Novelty Issue (2)

• Because of novelty requirement, important for applicant to keep filing date and priority date

• If novelty would be lost, applicant CANNOT refile an application to meet local requirements.

www.ficpi.org

Searching Designs

• Users need fully searchable and user-friendly databases

• FICPI Design Group has done a Design Searching Survey among our members

• Responses from 34 countries/regions around the world

• Accessible as EXCO/US09/CET/1203 at http://www.ficpi.org/libraryframe.html

www.ficpi.org

FICPI Searching Survey

• Substantial majority of databases in this survey are searchable online, e.g by proprietor name, title or Locarno Class

• Substantial majority of databases allow representations to be viewed

• Few make the Statement of Novelty or Claim available

www.ficpi.org

Searching by Visual Features

• Locarno Classification lists products in which designs are incorporated.

• Some Offices also apply Vienna Classification of Figurative Elements of Marks to designs, as supplementary tool.

• Need for system to classify designs by appearance

www.ficpi.org

Ad Hoc Group of the Locarno UnionPilot Group study

• Pilot Group proposal for a system to facilitate searches for designs by reference to visual features.

• Common Categories: shape and/or ornamentation, surface and colour.

• Concentrating on Class 6 (furniture).• Indexing system currently under trial.• Much work to be done.

www.ficpi.org

Conclusion

• FICPI sees increasing international recognition of the importance of designs.

• We encourage greater participation by Member States in the work of the SCT on designs.

• We are pleased to assist as observers in this work and in the study on reform of the Locarno Classification.