Industrial Design On The Spot In WIPO Committee This Week

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Delegates to the World Intellectual Property Organization this week are expected to have a focussed session on the protection of industrial designs. The last meeting of the committee in charge of this issue ended disappointingly for proponents of a quick path to a treaty on industrial design, but the committee was mandated by the October WIPO General Assembly to expedite work on the matter.

The potential treaty is meant to simplify and reduce administrative procedures for applicants, whether they are residents or non-residents, by providing harmonised rules.

The 28th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) will take place from 10-14 December.

An industrial design is the aesthetic aspect of an item. According to WIPO, “the design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color.” Industrial designs cover a large area of products, “from housewares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods.”

The SCT has been working on a set of draft treaty articles and regulations to protect industrial designs in an exercise that is considered by proponents, mainly developed countries, as a beneficial simplification of international registration procedures for individuals and small-and medium-sized companies. Such harmonisation would promote innovation and economic growth, they said.

Although a number of developing countries seem to find an interest in this harmonisation of procedures, they have some concerns about the costs implied and have argued that the SCT needs to take into consideration the different development levels of countries, in particular the need for capacity building. They have said that treaty talks were premature (IPW, WIPO, 21 September 2012).

The October WIPO General Assembly seems to have sought a balanced approach by “recognizing the importance for all member States of a Design Law Treaty, the General Assembly urges the SCT to expedite in a committed manner work with a view to advance substantially the basic proposals for a Design Law Treaty (draft Articles and Regulations ..).” But it also required that in its work, the committee consider including “appropriate provisions regarding technical assistance and capacity building for developing countries and LDCs [least-developed countries] in the implementation of the future Design Law Treaty.”

Reduced Agenda, New Document

The week’s agenda [pdf] is thus spartan, as it will focus only on three items on industrial design, not trademarks or geographical indications.

The three industrial design items are: draft articles [pdf] for industrial design law and practice; draft regulations [pdf]for industrial design law and practice; and an overview of provisions [pdf] regarding technical assistance and capacity building in treaties administered by WIPO [pdf], which is a new document.

This new document, which presents an overview of the provisions currently existing in other WIPO-administered treaties, was prepared by the secretariat. It follows a recommendation by the General Assembly to include provisions regarding technical assistance and capacity building for developing countries and LDCs in the implementation of the future design law treaty, according to WIPO.

On the table are currently 30 draft articles, of which Articles 22 to 30 are newly added. According to WIPO, they provide administrative and final clauses that can be found in all WIPO treaties. Also on the table are 15 draft regulations.

There are both draft articles and draft regulations in an effort to create a two-tiered structure in which the treaty text contains important overarching principles that refer to the regulations for details, according to WIPO. Provisions that are included in the regulations, which have a purely administrative nature, can be updated as the laws develop. This two-tiered structure is more flexible as opposed to a single treaty text where everything is locked in. At WIPO, the Singapore Treaty on the Law of Trademarks and the Patent Law Treaty already have the same structure, a WIPO official said.

Mains areas covered by the potential treaty are the content of applications, the filing date requirements, the representation before the office, the novelty grace period, the division of applications, the publication of industrial designs, and the recording of changes, for example in the case of change of ownership.

Publication, Grace Period, Reinstatement of Rights in Discussions

According to Marcus Höpperger, director of the Law and Legislative Advice Division, Brands and Designs Sector at WIPO, discussions that have arisen during the last meetings of the committee were mainly around the publication of industrial designs, the reinstatement of rights in case of loss of rights despite due care, and the grace period for filing industrial designs.

On Article 9, on publication of the industrial design, Höpperger told Intellectual Property Watch, there are “two main approaches to that question among member states. One approach is linked to design protection under a design patent system, which currently exist in the United States and in Japan, for example, and the other can be associated with countries that provide for the registration of designs.”

“Generally speaking,” he said, “design patents are issued as the result of a design patent procedure, often implying a longer examination period. The procedure for design registration systems is much lighter and registration is faster.”

“Often, design registration systems provide for a possibility of deferred publication, so that the design is kept secret for a certain period of time,” said Höpperger. “The draft treaty text currently has a provision under which offices of contracting parties provide the possibility to applicants to keep the design application unpublished for at least six months. Views in the committee are divided as to whether this possibility should be mandatory or optional.”

According to the draft report of the last session [pdf], Japan supported a mandatory provision, as “designs should be kept unpublished for a certain period of time, in the interest of users.” This was also supported by Norway, Peru, Switzerland, and the European Union. China said that for the sake of flexibility, it preferred that it be optional. This view was shared by Algeria.

Article 13 is on reinstatement of rights over a design after a finding by the office of due care or unintentionality, which Höpperger said refers to the question of “How can the applicant ask for the reinstatement of his/her rights after having lost them due to unforeseeable circumstances such as postal service failure or natural disasters, for instance.”

“Some delegations are in favour of a mandatory provision for reinstatement of rights, which, for example, can be found in the Patent Law Treaty (PLT), whereas other delegations would prefer such a provision to remain optional,” he said.

According to the draft report of the last SCT session, South Korea said “it would be unreasonable that a system did not provide for reinstatement of rights, as this could lead to a loss of rights, even if the cause was not imputable to applicants or holders.” Denmark, Spain and Switzerland also favoured the first option of the article, which provides for a mandatory provision, according to the draft report.

But India said it did not support Article 13 “except in cases of restoration proceedings as provided for by its national law, as well as postal delay with documentary evidence,” according to the report, which added that “[T]he Delegation said that the provision implied mandatory amendments of its national law, which would not be acceptable.” The report also stated that China was in favour of an optional provision.

Article 6 deals with the grace period for filing in case of disclosure. According to Höpperger, it refers “to the period of time between the disclosure of the designs, for example to a targeted public, such as investors, or during a trade fair, and the application for the new design. A number of countries already have grace periods in their legislation.”

In the SCT, “countries favour the option in general and the discussion is around the extent of the grace period, whether it should be 6 or 12 months,” he said, adding that “nevertheless, the issue appears to be solved, as the 27th session of the SCT had ¬agreed to keep both options in the text, namely six or twelve months.”

Out of the agenda is the contentious issue of potential further work on a study [pdf] provided by WIPO at the last session on the potential impact of the work of the SCT on industrial design law and practice. The study was deemed satisfactory by the European Union and Group B developed countries, but developing countries said the SCT should take into account the different levels of development of its member states, and further work on the study was needed, in particular to allow more applicants and IP offices in developing countries to provide answers.

As to why it does not appear on the agenda, the WIPO secretariat’s terse answer was that the General Assembly did not mention the study in its recommendations.

Catherine Saez may be reached at info@ip-watch.ch.

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