international design patent protection: developing a...

International Design Patent Protection:

Developing a Global IP Strategy

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TUESDAY, SEPTEMBER 10, 2019

Presenting a live 90-minute webinar with interactive Q&A

Tracy-Gene Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C.

David R. Gerk, Patent Attorney, Office of Policy and International Affairs,

U.S. Patent and Trademark Office, Alexandria, Va.

Sandra K. Nowak, Assistant Chief Intellectual Property Counsel,

3M Innovative Properties Company, St. Paul, Minn.

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Global IP Strategy - International

Industrial Design Right Protection

David R. Gerk Attorney-Advisor

Office of Policy and International Affairs (OPIA)

September 10, 2019

Topics to be discussed

• Multilateral industrial design developments

– WIPO SCT

– ID5 Industrial Design Forum

• The Hague system

• National industrial design developments

7

WIPO SCT

Multilateral industrial design developments

8

WIPO SCT: Design Law Treaty?

• Draft of the Design Law Treaty (DLT)

– Application (Article 3)

– Presentation date (Article 5)

– Grace period (Article 6)

– Repair - time limits (Article 12)

– Restoration of rights (Article 13)

– Correction/addition of the priority claim (Article 14)

• Remaining issues:

– Disclosure requirement?

– Technical assistance?

9

Forty-first session (April 8-11)

SCT41/2/ Prov. – compilation of returns to the

questionnaire on GUI, icon and typeface/type font designs

– At least 31 member states and the Benelux Org. for IP (BOIP)

responded

– Focus:

• Requirement for a link between design and article or product

• Methods allowed by offices for the representation of animated designs

10

Forty-first session (April 8-11)

SCT/41/3 – questionnaire on temporary protection

provided to industrial designs at certain international

exhibitions under Article 11 of the Paris Convention

– “Grant temporary protection to … industrial designs… in respect of

goods exhibited at official or officially recognized international

exhibitions.”

– Temporary protection does not extend the periods provided by

Article 4 – right of priority.

– Implemented through grace period or exhibition right of priority.

11

ID5 Industrial Design Forum

Multilateral industrial design developments

12

ID5 Industrial Design Forum

• 2015 ID5 was launched at the USPTO

– CNIPA

– EUIPO

– JPO

– KIPO

– USPTO

– WIPO (observer)

• ID5 website: www.id-five.org

13

90% of global

industrial

design filings

14

14

2018 achievements and results

• Electronic priority document exchange (WIPO DAS)

• First of their kind comparative studies for users

– Eligibility

– Grace period*

– Partial design*

– New technological/emerging designs (GUI, icons, etc.)*

• Improvements to global design system

– Japan - Grace period shift to 12 months

– China – Enhanced consideration of partial design

15

* USPTO conceived, proposed and led ID5 initiatives

WIPO DAS

• The WIPO Digital Access Service (DAS) is an electronic system

allowing priority documents and similar documents to be securely

exchanged between participating intellectual property offices.

• The system enables applicants and offices to meet the requirements

of the Paris Convention for certification in an electronic

environment.

• Offices participate as depositing offices and/or accessing offices (23

participating offices).

16

http://www.wipo.int/das/en/

WIPO DAS for industrial designs

• Canada

• Chile

• China

• Georgia

• India*

• Republic of Korea

• Spain

• United States of America

17

* Depositing office only

https://www.wipo.int/das/en/participating_offices/search.jsp

Notable projects in process

• 3D printing and industrial design protection

• ID5 Recommended Design Practices*

• Remedies and relief for industrial design

infringement*

18

* USPTO conceived, proposed and led ID5 initiatives

The Hague System

Global IP strategy - international ID right protection

19

Summary of the Hague System

• Centralized acquisition and maintenance

• Industrial design rights

• Filing single international application

• Single international registration

• One or more designated contracting parties

(member countries)

20

60 Geneva Act (1999)

10 Hague Act (1960)

70 Contracting

parties Hague Union

21

The Hague Agreement: trends

22

Source: WIPO Hague Yearly Review 2019 –

International Registration of Industrial Designs


23

Source: WIPO Hague Yearly Review 2019 –International Registration of Industrial Designs


24



25



26


Highlights of trends

• Hague system continues to generally grow

– Number of designs, membership, and geographic participation,

applicant use

• Significant variance in use depending on applicant’s

origin and designations

• Priority claim in 45.7% of applications in 2018

• Large examination offices/parties have the fewest

designs per designation, largest percentage of refusals

27

Hague convergence in practice

• Partial designs and disclaimer practice

– In the description and/or dotted or broken lines or coloring (AI 403)

• Time period for examination:

– 6 month or 12 month (Article 12 and Rule 18)

• Term of protection

– 15 years or more (Article 17).

• IP office examination focused on substance

– no office may refuse the effects…on the ground that requirements relating to

the form or contents …provided for in this act or the regulations ..or are

additional to, or different from, those requirements have not been satisfied

(Article 12)

28

Application contents may vary

• Application for international registration (DM/1)

• Annex I-V

– Annex I - Oath or Declaration of the Creator (US)

– Annex II – Supporting Documents Concerning a Declaration the Exception

to Lack of Novelty (Republic of Korea)

– Annex III – Information on Eligibility for Protection (US)

– Annex IV – Reduction of United States Individual Designation Fee (US)

– Annex V – Supporting Document(s) Concerning Priority Claim to the Korean

Intellectual Property Office (Republic of Korea)

29

https://www.wipo.int/hague/en/forms/

30

https://www.wipo.int/export/sites/www/hague/en/forms/docs/form_dm_1-editable1.pdf

https://www.wipo.int/export/sites/www/hague/en

/forms/docs/form_dm_1-editable1.pdf

31

32

Security

clearance /

foreign

filing

license


Submission of priority document:

• Directly to the designated contracting party

• Electronically via WIPO DAS

– Information provided with international application

– WIPO electronic filing interface or DM1 form

33

WIPO DAS

code


34

International registrations –

published under the treaty

• Deemed a publication under 35 U.S.C. § 122(b)

– Provisional rights under 35 U.S.C. § 154(d)

• Available through public and private PAIR

• Submission of further documentation with

respect to the U.S. designation to the USPTO

35

The Hague Agreement

USPTO page

– Forms

– Fees

– Resources

– FAQ

– Tips for filing

– Contacts

36

https://www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs

National industrial design

developments

Global IP strategy - international ID right protection

37

Global developments snapshot

• Canada

• Mexico

• Japan

• Singapore

• United Kingdom

38

Canada update

39

• Geneva Act of the Hague Agreement

– Took effect on November 5, 2018

– Changes to Industrial Design Act, Industrial Design Regulations, Industrial Design Office Practice Manual (IDOP), and E-Service

– Term of protection increased from 10 to 15 years (longer of 15 yrs from IR date or 10 yrs from CA registration date)

• Revamped IDOP Manual

– Drawing techniques, jurisprudence, use of color, and computer-animated designs

• Modernized practices to align with trading partners

– New methods for disclaimer: color, blurring, statement; New methods to show boundary lines (e.g., broken lines)

• Other notable changes:

– Accept IRs with multiple designs

– Delayed registration (national) or deferred publication of IR (international) for up to 30 months

– Representative for service is no longer required/appointed agent does not need to be Canadian

Mexico update

• Amendments to the Mexican Industrial Property Law

– Went into effect in April 27, 2018

• Industrial design patent applications now published after formal

examination

– Previously only patents; now designs and utility models

• Key terms used to define novelty clarified in statute

– “Independent creation” and “significant degree”

• Term of protection

– 5 year initial term; renewal possible up to 25 years

40

Japan update

Amendments to the Japan Design Act and design system

– Enhancing scope of protection (Articles 2 & 8-2)

• Graphic images not recorded on articles; projected on places other than articles

• Building exterior and interior design

– Enhancement of “related” designs

• Protection for designs continuously developed to one consistent concept

• Can be registered with 10 years of the initial principal design

– Period of protection

• Extended from 20 years from the registration date to 25 years from the applications date

– Simplified filing procedures

• Multiple designs bundled in one applications; no article class

– Manufacturing or importing products separated in parts now may be infringement

41

Singapore update

Legislative amendments to account for latest trends in design and tech

– Went into effect in October, 2017

– Broaden scope of design protection

• handmade items

• color as a feature of designs

• “non-physical products”

– Vest ownership of a commissioned design in designer by default

– Grace period lengthened to 12 months (from 6 months) and for any

disclosure from designer

– Multiple designs within the same Locarno class

42

United Kingdom update

Brexit and UK industrial design rights

– Expectation that rights will be provided for unregistered and registered design rights

that track rights in place before the Brexit

– Existing rights?

• Expected the UK will provide an equivalent UK right with minimal administrative burdens.

– Unregistered design rights

• Supplementary Unregistered Design (SUD) - new right that mirrors the disappearing EU

unregistered design right

• Existing UK unregistered design right will remain in existence – so two unregistered rights

– UK became a member of the Hague Agreement on June 13, 2018

• Reliance on EU membership no longer needed to utilize Hague System

• Transition of existing IR designating EU to effect in UK

43

Summary global ID trends

• Convergence and modernization related to Hague

accessions

– Partial designs

– Disclaimer techniques; treatment of color

– Term of protection; examination period

• WIPO DAS

• New technological designs and environments (GUI, VR,

AR designs)

44

Thank you!

www.uspto.gov

David R. Gerk

Office of Policy and International Affairs

[email protected]

45

46. All Rights Reserved.9 September 2019© 3M 3M Confidential.

International Design Patent Protection: Developing a Global IP Strategy

Sandra K. NowakAssistant Chief Intellectual Property Counsel3M Innovative Properties Company


Design Rights are an Important Part of a Wholistic IP Strategy

Design Patents offer some significant advantages:

- Issue Faster

- In the US, 20 months to issuance for design patents versus 54 months for utility

patents filed as PCT applications that entered the US under 35 USC §371*

- With expedited exam in the US, design patents can issue in 3-4 months*

- Higher Allowance Rates

- In the US, the average US allowance rate for design patent was 84.6% compared

to 58.0% for utility applications*

- Many countries are registration systems, where there is no substantive examination, so

design right issuance rate is almost 100% in these countries (EU, China, MX). Other

counties are hybrid systems that issue quickly (AU, BZ, South Korea)

* See https://www.uspto.gov/corda/dashboards/patents/main.dashxml?CTNAVID=1006


Design Rights are an Important Part of a Wholistic IP Strategy

Design Patents offer some significant advantages:

- Less expensive

- The average 2019 cost of filing and maintaining a design patent in 5 key

countries/regions (US, EU, JP, CN, and KR) is approximately 21 times less than

filing and maintaining a utility patent in those countries/regions

- Secrecy

- In China, Canada, South Africa, and the U.S. design patent applications

are not published unless filed through the Hague. They become publicly available

only upon issuance.

- In Brazil, the applicant can request 180 days delay before publication.

- In Japan, the applicant can request that the patent be secret until 3 years after

issuance.


Strategies for What Design Patent Applications to File

Business (not legal) considerations for developing a design portfolio strategy that provides the biggest bang

for the buck:

1. Consider pursuing design protection only for products that will be launched/commercialized.

2. Consider pursuing design protection only for those products whose design is truly unique.

3. Consider pursuing design protection only for products whose projected sales exceed a predetermined

minimum (e.g., $1M) and/or products who have a projected shelf life of over a predetermined number

of years (e.g., 3-5 years).

4. Consider prioritizing design protection for industries or product areas with high incidence of knock-offs

(e.g., fashion, food packaging, jewelry, etc) and/or where such knock-offs create a risk to human health

and safety (e.g., medical tools, road delineation, etc).


Strategies for Where to File Design Patent Applications

As with other IP rights, design protection is territorial. Deciding where to apply for design

protection is a fine balance between cost and coverage. It can become very expensive to seek

protection worldwide, so consider filing only in jurisdictions that offer one or more of the

following:

- The countries where the products covered by the design rights will be sold

- The countries where the products covered by the design rights will be manufactured

- The countries in which your key competitors make or sell the products that compete with the

products covered by the design rights

- Prioritize countries with experience in design patent enforcement.

- Consider prioritizing countries without substantive registration (which require little effort or

cost) over examination countries (which are typically more expensive and time-consuming)

- Consider the cost-benefit offered by the protection (for example, a registered community design

in Europe secures protection in all members of the European Union, is relatively low-cost, and proceeds

quickly because it does not engage in substantive examination prior to grant).


Unique Enforcement Opportunities for Design Patents

Design patent can be enforced in the same ways as utility patents,

through traditional litigation and licensing efforts.

In addition to these, design patents offer the patentee some

unique, inexpensive, and highly effective enforcement strategies

not equally available to utility patents.


Online Takedowns of Infringing Product

Online takedowns: removal of a product being sold online because it infringes a

design patent (similar to trademark-based online takedowns)

Background:

Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2nd Cir, 2010) held that eBay was not

liable for counterfeit Tiffany products that were sold on the eBay platform.

Altinex Inc. v. Alibaba.com Hong Kong Ltd., 2016 WL 6822235 (C.D. Calif. Mar. 25,

2016).

The plaintiff could not identify the third parties selling infringing products on

Alibaba, so they sued Alibaba. JMOL was granted to Alibaba because it adequately

distanced itself from the website transactions through user agreements.


Online Takedowns of Infringing Product – Alibaba™

The Alibaba.com Intellectual Property Protection System, known as AliProtect,

resides at legal.alibaba.com.

Submit the Following:

1. Submit proof of your intellectual property rights

2. AliProtect reviews and approves/rejects (reasons provided if rejects)

3. Submit complaints – e.g., pasting URL’s into the IPR Complaint interface

4. AliProtect will mark them as either “In Progress,” “Unable to Process,” or “Listing

Removed.”

Result: Once above requirements are fulfilled and Alibaba approves, the listing will be removed. Alibaba

reports taking down more than 100 million hyperlinks to infringing product each year.

http://legal.alibaba.com/


Online Takedowns of Infringing Product – Amazon™

The Amazon process is available at

https://sellercentral.amazon.com/gp/help/external/help.html?itemID=U5SQCEKADDAQRLZ

Submit the Following:

1. Identify the IP being infringed.

2. Identify the nature of the infringement.

3. List the infringing products (either Amazon Standard Identification Numbers (ASINs) or

URLs for the product)

4. Include your contact details that can be shared with the secondary sellers.

Result: Amazon will inform the responsible sellers about your claim and share your secondary contact

information with them should they have any follow-up questions. Once the notice is accepted and

approved, the content reported will be removed from the Amazon site.

https://sellercentral.amazon.com/gp/help/external/help.html?itemID=U5SQCEKADDAQRLZ


Custom Border Stops of Infringing Product

Customs border stops: Some countries keep a registry of goods protected by design patents (similar to

those for TM and ©) and by registering the product/design, a patent owner can prevent non-authorized

infringing product from entering a country

* This can be highly impactful in reducing counterfeit and knockoff product sales

Background:

Advancements in counterfeiting technology (e.g., 3D printing) has increased the challenges to preventing

counterfeit product from entering a country. Often, the product crosses the border into without the TM

label, which is applied in the country. The US Customs Border Protection Office estimated that the total

market value for the labels/tags seized in 2017 was over $80M, a 20% increase since 2013.

Enforcement of design patents at the border eliminates the ability of infringers/counterfeiters to use these

schemes and protects consumers and patent holders.


Customs Border Stops In Practice

- Design patents can be recorded/registered in a database at customs.

- Customs Officers determine whether the patented design and imported design are

substantially the same in overall appearance.

* AI tools may be sophisticated enough to use image recognition to compare

products to registered designs

- Product found to infringe is stopped at the border.

Countries with custom border stops for design patents: European Union, Japan, South Korea, China, India,

Mexico, Turkey, Argentina, South Africa, Switzerland, and Panama.


Thank You

Sandra K. [email protected]

Technical Minds. Legal Muscle.

Developing a Global IP Strategy

International Design Patent Protection

Tracy-Gene G. Durkin

September 10, 2019

Key Differences Between Jurisdictions

59

privileged and confidential © Sterne Kessler 2019 60

• Three dimensional designs

What types of designs can be protected?

D755,296D766,752


• Partial designs


D819,323D844,306


• Components


D813,239D797,810


• Sets


D809,560 D820,689


• 2 dimensional designs


D789,411D834,616


• Retail fixtures and environments


D812,771D762,648


• Industrial parts


D649,978 D736,681


• Number of figures/views

How are designs represented?

D845,294

JP D1525708


• Line drawings vs. digital images


D667,731

D745,0

41

D666,916


• Broken lines


D666,9

15

IN 283350D789,142


• Shading


D704,069 CN 302734247


• Transparency or translucency


BR 30 2018 001018-3D842,363


• Physically separate parts


JP D153668

(Not patentable in KR)


• Cross-sectional views


JP D1563518D848,408


• Having sufficient support in case you need to change it

− US: Electronic Device with Graphical User

Interface

▪ Preamble language for support: The graphical user interface…may be

applied to an electronic device having a display screen, for example,

a portable communication device, a portable multimedia device,

a portable information terminal, a mobile phone, a smartphone, or the like.

− EM: Graphical User Interfaces (part of-)

− JP: Computer with Communication Function

− KR: Display Panel with Graphical User

Interface Being Expressed

Title

D846,567


Not Used:

• United States

• Canada: Not used

(Patent Office assigns based on Canadian Classification Standard)

Locarno Class

Used, assigned by

Patent Office:

• Australia

• Japan

• Mexico

• Russia

Used, Applicant can

propose:

• Brazil

• China

• EUIPO

• India

• Korea

• Turkey


• In many countries, including the US, the drawings constitute the description. Additional narrative in the specification can provide context.

• Countries that require additional written description include:

− CN: Brief description of article, purpose, and (software only) user interaction

required

− JP: Design and article descriptions required

▪ Priority application language for support: The present article is a portable

information terminal having a function of management, for example, activity

management, fitness management, and/or wellness management etc. The

image…is for displaying such as progression or achievement of the various

management items, for example, the activity, fitness and/or wellness etc. of a user.

− RU: Closest prior art identification and technical description of design required

• Countries that do not use allow additional written description include:

− CA

− EM

− IN

− MX

− TR

Written Description

JP D1539479


• Some countries require that hardware be shown in the drawings in broken lines with the software

− Canada

− Japan

− Korea

• Hardware may seldom be added to the foreign application without losing priority

Hardware Device Requirement for SoftwareJPD 1531526


Thank You

More information available at:http://www.skgf.com/design-patents

[email protected]

http://www.skgf.com/design-patents

mailto:[email protected]