Diplomatic Conference to Conclude and Adopt a Design Law TreatySeptember 25, 2024

The USPTO has concluded seeking comments from the public on negotiations at the World Intellectual Property Organization (WIPO) regarding a proposed Design Law Treaty (DLT). A diplomatic conference to finalize the treaty will soon be conducted in Riyadh, Saudi Arabia, November 11-22, 2024.

The comments were intended to inform U.S. government participation in the diplomatic conference  to conclude and adopt a Design Law Treaty. The proposed Design Law Treaty is a formalities treaty that would require contracting parties—that is, the countries and intergovernmental organizations that accede to the treaty—to adhere to certain requirements with respect to the protection of industrial designs.

Examples of its provisions include: (i) Limits on the requirements that contracting parties can impose as a condition for according design application filing dates to applicants; (ii) Requirements that contracting parties provide design applicants with certain flexibilities, including flexibilities for applicants who miss a time limit during the application process or who unintentionally allow the registration to lapse; (iii) Requirements that contracting parties must allow design applicants to correct or add a priority claim to an application in certain circumstances; (iv) Requirements that contracting parties provide for a grace period during which public disclosure would not affect eligibility requirements for obtaining the right; and (v) Limits on the requirements that contracting parties may impose as to when applicants can be required to obtain local representation to take an action before the local office.

In addition, certain provisions are the subject of alternative options or proposals supported by several delegations, including: (i) Requirements for an applicant disclosure in design applications of the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources providing inspiration for, tangentially associated with, or utilized or incorporated in, some aspect of the industrial design; (ii) Limits on the requirements in requests for recording of a license or a security interest; and Effects of the non-recording of a license.

The USPTO received three substantial comments I expect will grab the attention of Director Kathy Vidal, each of which is summarized below.

American Intellectual Property Law Association (AIPLA)

The AIPLA methodically provided answers to each and every one of Director Vidal’s specific inquiries. Perhaps most importantly, the AIPLA provided marked up copies of the Industrial Design Law and Practice – Draft Articles (SCT/S3/4) and – Draft Regulations (SCT/S3/5). The AIPLA sparsely suggested addition of text to the articles and regulations, but suggested many deletions therefrom.

The AIPLA did not support language requiring (A) a disclosure of the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design or (B) an indication of any prior application or registration, or of other information, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design. Option (B) arguably conforms with current U.S. design patent practice, so the suggestion to support neither option (A) nor option (B) is significant.

The AIPLA supports that to be afforded a filing date, only a representation of the industrial design be needed, and not a sufficiently clear representation. This conforms with current U.S. design patent practice.

The AIPLA disfavors requiring Applicants to provide a brief description of the reproduction or of the characteristic features of the industrial design. This conforms with current U.S. design patent practice.

The AIPLA favors use of a 12 month grace period for prior disclosures of the design by the applicant. This conforms with current U.S. design patent practice.

The AIPLA disfavors requiring Applicants to provide (x) a statement of novelty and (y) a description in the details concerning the application. Option (y) arguably conforms with current U.S. design patent practice, so the suggestion to support neither option (A) nor option (B) is significant. The AIPLA reasons for not supporting inclusion of a “description” to the closed list of permissible requirements was because such a requirement could confuse or mislead by focusing on semantics, and would add more burden.

The AIPLA disfavors applicants being allowed to use of a combination of (i) photographs, (ii) graphic reproductions, and (iii) any other visual representations to depict a single design. This conforms with current U.S. design patent practice.

Intellectual Property Owners Association (IPO)

The IPO is an international trade association representing a “big tent” of diverse companies, law firms, service providers and individuals in all industries and fields of technology that own, or are interested in, intellectual property rights. IPO membership includes over 125 companies and spans more than 30 countries.

The IPO provided comments in a narrative format. The IPO advocated for having a minimum length of time during which an industrial design application remains unpublished—a period of six months from the date of filing in each Contracting Party—and not, as some WIPO delegations proposed, from the priority date. The IPO stressed the DLT is an opportunity to provide a uniform approach, such as one that permits multiple designs to be included in a single application and accorded a single application number upon filing in the office of each Contracting Party, subject to later objection on the basis of unity of invention or restriction requirements and with the right to file divisional applications directed to non-elected designs or embodiments. The IPO believed Article 8 of the Basic Proposal for the DLT appeared to adequately address this issue.

Like the AIPLA, the IPO argued against a disclosure requirement for traditional cultural expressions, traditional knowledge, or biological/genetic resources utilized or incorporated in industrial designs.

Intellectual Trademark Association (INTA)

Interestingly, INTA has adopted Model Design Law Guidelines and Guidelines for Examination of Industrial Designs, which contain INTA’s basic positions on design law and practice and serve as a framework by which INTA analyzes the current working text of the DLT and comments on certain questions raised in the Notice. In some instances, the guidelines deviate substantially from the proposed language that is to be adopted by the DLT. Some notable examples follow.

It is INTA’s position that a single application should be able to include multiple designs, even if the designs look different and even if the Locarno classes of each design are different, and that the applicant should be able to divide the application into multiple applications at the office’s request and maintain the original filing date and the benefit of the claim of priority date. This is inconsistent with design patent practice under the Hague System but conforms with U.S. design patent practice, which would almost assuredly issue restrictions in such an event.

INTA supports deadlines for an action in a procedure before an office to be extendable at least once, in view of the fact that the consequences of missed deadlines in relation to designs can be drastic. INTA further supports a remedy for missed deadlines allowing for the reinstatement of rights.

INTA strongly encouraged Contracting Parties’ offices accede to WIPO Digital Access Service (DAS), an electronic system that allows priority documents and similar documents to be securely exchanged between IP Offices.

Finally, INTA wanted to limit the requirements for providing means of communication to just one such means, as they believed a stricter requirement avoids running afoul of certain jurisdictions’ stringent privacy laws. Oddly enough, INTA cited as examples for such strict laws to be those of the EU, and not those of stricter jurisdictions for data privacy laws within the United States, such as California.

Gregory Lars Gunnerson is a Partner, Intellectual Property Attorney in the Mechanical and Electrical Patent Practice Groups, and Chair of the Design Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.