Entries in industrial designs (5)


Hague Agreement (Guest Post)

Further to our prior coverage of the implementation of the Hague Agreement, we are pleased to publish the following from Audrey Pastoret, a guest of ours from France.

The Patent Law Treaties Implementation Act of 2012 signed by President Obama on December 18, 2012 implements the Hague Agreement in the United States. It is intended to provide industrial designs with protection in states and governmental organizations parties to this arrangement through a single international application effected at the WIPO. Before the Hague Agreement, an application had to be filed in every country where protection was desired, resulting in several applications being filed for a single design patent. Under the Hague agreement a single application can provide protection in multiple countries.

An international application under the Hague Agreement does not require a prior national deposit, and can be filed either at the WIPO or at the national office. The application may be in English, French or Spanish.

When filing an application under the Hague Agreement, one must either be a citizen of a Contracting Party or a Member State of an international organization that is a Contracting Party. Alternatively, one must have either a residence or an habitual residence on the territory of a Contracting Party, and one must have an effective industrial or commercial establishment on the territory of a Contracting Party.

The Hague Agreement consists of three International Treaties, but since 2010 only two of them are still enforced:  The Geneva Act (1999) and The Hague Act (1960). (The London Act of 1934 was frozen in 2012).

The Geneva Act and the Hague Act are independent from each other, such that one country can join one or both. Accordingly, when asking for protection under the Hague Agreement in several countries, it is crucial to confirm that those countries are parties to the same Act. The United States are party to the Geneva Act but not the Hague Act. Consequently, the United States can ask protection in countries party to the same act (the Geneva Act) but cannot ask for protection in a country which is party only to the Hague act.

The Hague Agreement increases the protection duration for design patents in the US from 14 years to 15 years. This increase in protection duration is based on an initial 5 year protection which may be renewed for an additional 5 years, every 5 years until the total protection is reached, in countries where protection is desired. The total duration of design patent protection may vary according to each country’s rules.

Under the Hague agreement, an international application may contain a maximum of 100 Designs. All designs must belong to the same Locarno classification, which is an International Classification for Industrial Designs. Application costs are expected to increase with the number of designs claimed.

Under the Hague Agreement, publication takes place six months after the date of the international registration. However, an applicant may request immediate publication or request a deferment of publication.


Patent Law Treaties Implementation Act of 2012

S. 3486 (the "Act") has passed the House and the Senate, and awaits signature by the President.  

The summary of this Act reads, with emphasis added:

Amends federal patent law to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Treaty) and the Patent Law Treaty. (Both treaties were ratified by the Senate on December 7, 2007.) Standardizes application procedures to be consistent with other member countries.

Of note:

1) The Act will amend 35 USC 173 to change the term of a design patent from 14 years to 15 years from the date of issuance.

2) The Act will add 35 USC 381-390, of which 390 provides for the publication of the international design application, and will amend 35 USC 154(d) to expand Provisional Rights to a published international design application.

3) Under the Hague Agreement and the Geneva Act, WIPO states the "international application may include up to 100 different designs.  All designs must, however, belong to the same class of the International Classification of Industrial Designs (the Locarno Classification)." Although not specifically set forth in the Act, it is expected that International Design Applications filed under this Act will also be able to be filed with up to 100 different designs belonging to the same Locarno Classification.


Famous Industrial Designs Featured in New Stamp Set

From the website of the United States Postal Service:

The Pioneers of American Industrial Design (Forever®) stamp pane honors 12 of the nation's most important and influential industrial designers. Encompassing everything from furniture and electric kitchen appliances to corporate office buildings and passenger trains, the work of these designers helped shape the look of everyday life in the 20th century.

Each stamp features the name of a designer and a photograph of an object created by the designer, as well as a description of the object and the year or years when the object was created. The selvage features a photograph of the "Airflow" fan designed by Robert Heller around 1937.


VW’s Community Design Registration for New Beetle Invalidated

On February 2, 2011, VW’s European Community design registration for its second-gen modernized VW Beetle, Community Design no: 000111596-0001 (“CD’001”), was invalidated by the Invalidity Division of the Office for Harmonization in the Internal Market (OHIM), a European Union agency that oversees registration of trademarks and designs.

Figure 1 - Images from CD'001

AUTEC AG, a maker of toy car models, filed for a declaration of invalidity of VW’s community design 000111596-0001 (“CD’001”) on December  16, 2009, for lack of novelty and individuality.  As evidence, AUTEC cited a VW beetle fan website that recounts the evolution of the “new Beetle” design from early 1991 to 1998, and argued that the “new Beetle” design was known to the public because, prior to registering CD’001, VW had shown the “new Beetle” at several major public car shows and units had been produced and shipped to the U.S.   AUTEC then argued that comparing CD’001 and the known “new Beetle” design would acquaint the informed user of any differences between the designs, and that any such differences would have been within the field of freedom of the designer in question, and, as such, invalidation of CD’001 would be appropriate under CDR Article 6.

VW countered by arguing that CD’001, which was registered on December 9, 2003, covered a second generation model of the “new Beetle” which was substantially different from the first generation and original concept models.  In doing so, VW elaborated that its modern interpretation of the classic VW Beetle was developed in 1991 during a design study called “Concept 1,” which then matured into a model called “Concept 1.”  Concept 1’s design was registered with WIPO in 1994 (DM/030041).  The first generation model of the “new Beetle” was developed based on “Concept 1,” and its design was registered with WIPO in 1996 (DM/037400).

Figure 2 - Image from DM/030041

Figure 3 - Image from DM/037400

VW further noted that the second generation model of the “new Beetle” design wasn’t shown publically until September 2005 (which is after the application for CD’001 was filed), when it was unveiled at the International Motor Show in Frankfurt.  VW argued that this second generation model differed significantly from Concept 1 and the first generation model of the “new Beetle” for a number of different features including a wider fender, different tail lights, and a distinguished bumper.  VW concluded that CD’001 met the individual character requirement because the informed user, who would have had experience with more expensive products like cars, would have perceived the details, and would have appreciated both the similarities and the differences between CD’001 and the prior registrations.

In rendering its decision, the Invalidity Division compared the features of CD’001 to the features of the international registrations and identified the differences between them.  The Invalidity Division noted that the informed user would be familiar with vehicles and their function, and would grasp the restrictions on the freedom of a designer in designing vehicles.  The Invalidity Division then stated that the differences falling within the field of freedom of the designer was not determinative of invalidity, noting that a designer can naturally only move within the context of his or her freedom.  The Invalidity Division then weighed the similarities and differences between CD’001 and the prior international registrations and concluded that the differences did not shift the balance in favor of the differences, even in light of any increased attention by the informed user.  The Invalidity Division then held that CD’001 and the prior registrations did not meet the individual character standard under Article 6 because they would have given the informed user the same overall impression, and ruled CD’001 invalid.

The individual character requirement under Article 6 of the Community design regulation appears somewhat akin to the U.S. non-obviousness requirement under 35 U.S.C. § 103.  For example, under the individual character requirement, the Invalidity Division first considered the level of knowledge of the “informed user” prior to determining the overall impression the prior art designs had rendered on the informed user.  Analogously, under § 103, as interpreted by the court in In re Rosen, 673 F.2d 388 (C.C.P.A. 1982), the proper standard for obviousness is whether the design-in-suit would have been obvious to a designer of ordinary skill of the articles involved, which initially requires the court to look to the knowledge of the “ordinary designer.” 

However, there are subtle differences between the individual character standard and § 103 when evaluating prior art.  For example, In considering what overall impression publically available prior designs would give the informed user under the individual character standard, the Invalidity Division compared CD’001 to the prior WIPO registrations (DM/030041 & DM/037400) so as to ascertain the similarities and differences between them, and then weighed whether these differences would distinguish the CD’001 over the similarities found between CD’001 and the prior WIPO registrations.  In contrast, when evaluating prior art under § 103, as provided by In re Rosen, the claimed design, viewed as a whole, must be compared to a reference that has basically the same design characteristics as the claimed design and, in light of such a reference, it must be determined whether the claimed design would have been obvious to the ordinary designer.


U.S. Continues to Delay Ratification of the Geneva Act of the Hague Agreement Concerning International Registration of Industrial Designs

Brief History of the Hague Agreement

The Hague Agreement is part of the legal framework of the Hague System -- a system that provides a simplified mechanism for registering industrial designs in contracting states.  Under the Hague Agreement, an industrial design can be registered in any number of designated contracting states by filing a single international application, in a single language, with a single set of fees, and in a single currency.

On July 6, 1999, the U.S. became a signatory to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act).  However, the U.S. Senate has not yet ratified the Geneva Act, and must do so before it can be regarded as a contracting party.  It has been speculated that the U.S. Senate will give advice and consent to ratify the Geneva Act once the Patent Reform Act of 2010, which is pending before Congress, is signed into law.  There is also uncertainty regarding when the Patent Reform Act will be signed into law.

Legal Framework of the Hague Agreement

The Hague Agreement consists of three international treaties: the Geneva Act; the Hague Act of November 28, 1960 (Hague Act); and the London Act of June 2, 1934 (London Act).  The Geneva and Hague Acts operate independently.  Thus, an applicant who files an international application can only designate states that are party to a common act (for example, a state that is party to the Geneva Act cannot designate a state that is party to the Hague Act unless that state is also a party to the Geneva Act).[1]  A state may decide to become party to only one or to both acts.  The London Act has been frozen since January 1, 2010 and no new designation under that act may be recorded.

Who Can File an International Application under the Geneva Act

An applicant must be entitled to file an international application.  Entitlement is satisfied if the applicant is a national of, domiciled in, has a habitual residence in, or has a real and effective industrial or commercial establishment in a contracting state. 

Effect of Filing an International Application under the Geneva Act

Once an international application is filed under the Geneva Act in the International Bureau, the International Bureau ascertains whether the application complies with formal requirements, records the application in the international register, and publishes the application in the International Designs Bulletin.

Once published, the contracting states designated in the international application perform substantive examination of the application.  One key feature of the Hague system is that each designated contracting state may adopt its own laws to govern the substantive examination of the application.  If the application fails to comply with conditions of the domestic legislation of the contracting state, the contracting state may refuse industrial design protection.

If a contracting state refuses protection, the applicant has the same remedies as the applicant would have had if the applicant had filed the design directly with the examining office of that contracting state, and any further proceedings, including appeals, are effectuated according to the laws of that contracting state. 

If the contracting state does not refuse protection, the international registration has the effect of a grant of protection under the law of the contracting state.  Thus, the applicable law that defines the scope of protection of the industrial design is that of the contracting state where protection has been obtained.

Thus, it is re-emphasized that Hague Agreement is procedural in nature and the International Bureau does not assess the novelty of the design sought to be protected and is not entitled to reject an international application on substantive grounds.[2]

Duration of Protection under the Geneva Act

The duration of industrial design protection under the Geneva Act is 15 years (three five-year terms) extending from the date of registration.  In comparison, design patents in the U.S. currently have a duration of 14 years from issue.  Protection beyond the 15 years afforded by the Geneva Act is determined by the law of each designated contracting state.

Advantages of Filing an International Application under the Geneva Act

The Geneva Act enables applicants from a contracting state to obtain protection of their designs with minimal formality and expense.  Unlike the traditional route of filing an application in each state where protection is being sought, the Hague system provides that a single application, in one language, with one set of fees, and in one currency, can be used to register the design in each designated contracting state.

Additionally, under the Geneva Act, the international registration can be centrally maintained.  For example, through the International Bureau, applicants can appoint or cancel representatives, change their or their representative’s name and address, change ownership, and renew or renounce the registration in the designated contracting states.

Additional Resources

Hague System for the International Registration of Industrial Designs at http://www.wipo.int/hague/en/general/.

Office of the Administrator for External Affairs: Hague System for the International Deposit of Industrial Designs at http://www.uspto.gov/ip/global/patents/100318_USPTO_-_Hague_System_2_corrected.ppt.

[1] For an updated list of all Hague Agreement members see www.wipo.int/hague/en/members.

[2] Efforts to harmonize the law regarding industrial design protection are ongoing and are governed by WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications.  See www.wipo.int/trademarks/en/sct.html.