1. The 2008.08.29 Draft Amendment Patent Law –
Comments on DESIGN provisions
from a EU perspective
José IZQUIERDO, General affairs and external relations department, OHIM
International workshop on the revision of the Chinese Patent Law, Harbin, September 2008

2. Invite questions and encourage debate on DESIGN specific issues
Content
Submit comments to the August Draft Amendment, in particular to provisions related to DESIGNS
Invite questions and encourage debate on DESIGN specific issues

3. Topic I – Protection of patent rights
Comments
Topic I – Protection of patent rights

4. Comments
Q.: “Protection of design patents, differences to invention and utility model patents”

5. 1997 Draft Directive (WITHDRAWN)
EU law making on Patents and Designs – different routes
Trade Marks
1989 Directive
2004 Regulation
Designs
1998 Directive
2002 Regulation
Patent
Draft Regulation
Utility model
1997 Draft Directive (WITHDRAWN)

6. How can designs be protected in Europe?

7. Coexistence of protection systems
How can designs be protected in Europe?
Coexistence of protection systems
(a) National registration systems
(b) International registration system (WIPO)
(c) Community design system:
- Unregistered Community design
- Registered Community design (OHIM)

8. (c) Community design system:
How can designs be protected in Europe?
(c) Community design system:
- Established by the Community Designs Regulation in 2002
- The Regulation provides specific rules for design protection, different from the patent rules
- It establishes a uniform legal framework which creates design rights valid for the whole European Union, known as:
Unregistered Community Designs
Registered Community Designs

9. Reasons for a specific design legislation:
The Community Designs Regulation
Reasons for a specific design legislation:
needs of users investing in design innovation are not the same as those of users investing in patentable-technology (inventions) : the scale of investment is different
life cyle of designs is shorter than patentable subject-matter: swift grant procedures are therefore necessary for design owners
More and more jurisdictions regulate design protection outside the patent legislation
More “manageable” to legislate designs outside the patent legislation in terms of time and procedural cost (e.g. no agreement on Community patent regulation did not block adoption of Community designs legislation)

10. Australia: Designs Act 2003
Ad Hoc legislation on designs
Jurisdictions where specific design legislation on designs has been adopted or revised:
Australia: Designs Act 2003
Singapore: Registered Designs Act (Cap 266, 2001 Rev ed) (‘RDA’)
Korea: Design Law No. 951, Promulgated on Dec. 31, 1961
India: Designs Act, 2000 No. 16 of 2000 [25th May, 2000]
Japan: Design Law (Law No. 125 of April 13, 1959, as amended by Law No. 220 of December 22, 1999)
Canada: Industrial Design Act ( R.S., 1985, c. I-9 )
New Zealand: Designs Act 1953
Indonesia: Law No. 31 year 2000 regarding industrial designs

11. - Foster innovation in new design products
What are the objectives of the EU rules on designs?
Adopted in order to:
- Provide businesses and designers (both EU and foreigners) a uniform protection of designs throughout the territory of the European Union
- Foster innovation in new design products
Serve needs of all sectors of industry doing business in Europe: SMEs, large companies, from machinery manufacturing to decorative industries
Grant protection by means of a “user-friendly”, fast, affordable registration process before OHIM
Provide a solid right that can be enforced efficiently
Provide a fast route to invalidate rights

12. Registered Community designs :
Registered or Unregistered Community Design
Registered Community designs :
- can be obtained from OHIM after filing an application
- once granted, it gives the applicant an exclusive right to use and prevent others from making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design
- protection extends throughout the whole European Union territory without exceptions, during 5 years, renewable up to max. 25 years

13. Unregistered Community designs
Registered or Unregistered Community Design
Unregistered Community designs
- no filing required (OHIM is not involved at all)
- a design is protected in the European Union as an Unregistered Community design when it is disclosed for the first time within the EU
- disclosure: make it public (e.g. trade fair)
- condition: accessibility for European specialised sectors (e.g. a trade fair attended by significant number of competitors)
- provides the owner a right to prevent only if use results from copying, but it does not give an exclusive right. Protection is for 3 years maximum

14. What is a “design” under EU rules?
the appearance of the whole or a part of a product resulting from the features of, in particular, the ...
lines
colours
shape
texture
contours
materials
ornamentation

15. Examples of designs registered at OHIM (top 16 Locarno classes)

16. For protecting a design in the European Union, the design must:
be new (worldwide novelty standard) AND have individual character (different overall impression judged by an informed user)
not be dictated by its technical function and/ or by interconnections
not be against public policy or morality
ONLY THE LAST REQUIREMENT IS ACTUALLY EXAMINED BY OHIM – There is no substantive examination prior to registration
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

17. Example of design lacking NOVELTY
Prior design
Later design which lacks novelty

18. Example of design lacking INDIVIDUAL CHARACTER
Prior design
Later design which lacks individual character

19. Comment to Article 24:
Article 24 could be simplified by referring to novelty (like in the case of inventions) and by using the notion of “individual character”, instead of the “substantive differentiation”
Such notion of “individual character” also serves to raise the threshold of eligible designs so as to avoid receiving applications for some designs formed by copying prior designs or piecing features of prior designs
The missing element is to define “from which perspective is to be determined the differentiation?” – from a person skilled in the art? In the EU, this is not the perspective for DESIGNS, but rather the “informed user” (a specific notion alien to patent law)
The wording of the provision could also be shortened (e.g. there are two references to “conflict with prior legal rights”)
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

20. Comment to Article 26(6):
The elimination of two-dimensional designs from the scope of protection of the law has drawbacks
It will eliminate all elements of graphic design per se
In the EU, the notion of “design” covers “graphical design”. This allows industries dependent on graphic design (decorative industries, industries relying on graphic design such as telecommunications, entertainment, marketing and media) to benefit from this body of law
The 2009 revision of the Locarno Classification will consolidate the fact that graphical symbols, logos, surface patterns and ornamentation can be protected as designs (under the new class 32) (China is party to the Locarno Classification since 1996)
The EU law allows to protect a graphical creation both under trade mark and design rules (article 96.1 Community designs Regulation)
It is suggested to consider the notion of “design” in broad terms, including graphic elements
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

21. Comments
Q.: “Can separate patent rights be granted for associated designs (several similar designs)”

22. Under the European Union Community designs Regulation:
A design which is identical to a prior design is not “new” and therefore it cannot be validly protected
A design which, in the eyes of the informed user, does not determine a different overall impression, cannot be validly protected
If a design is not identical and generates a different impression, it can be validly protected
In one application, the applicant can file an unlimited number of designs applied to products belonging to the same Locarno class
As long as each design produces a different impression in the eyes of an informed user, the applicant can file them in one multiple application, which allows the applicant to save fees and simplify the filing process
Each design contained in multiple application is a separate design right, independent one from the other
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

23. 1 multiple application for 5 design rights

24. Under the European Union Community designs Regulation:
A different issue is filing a set of articles as one design
In this case, articles must have common features
It should be clear that the protection is sought for a design resulting from the combination of the articles, not for each article
In addition, the articles should ordinarily be on sale or intended to be used together
The representation of the design must show the set of articles together
1 single application
for 1 design right
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

25. However, it is unclear whether the intended purpose is:
Comment to Article 32:
This provision allows multiple applications (application with more than one design)
However, it is unclear whether the intended purpose is:
A) to allow filing a multiple application for several design rights Or
B) to allow filing an application for a set of articles, to be protected as ONE design
Both intentions are reasonable but it could be the subject of two different provisions in the law
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

26. Topic III – Invalidation procedure
Comments
Topic III – Invalidation procedure

27. Comments
Q.: “How to simplify the DESIGN invalidation and to link it with litigation procedure for patent infringement?”
Q.: “How to shorten the cycle of DESIGN invalidation and infringement litigation, including appeals?”

28. Under the European Union Community designs Regulation:
A design can be invalidated either by OHIM or by a court (only in a counterclaim)
Only 0.17% of registered designs are the subject of an invalidation request
The registered design is presumed valid by courts; courts cannot raise a claim of invalidation themselves
Courts must hear infringement actions without requesting a search report; if the defendant does not raise a plea of invalidation, the court will not expect a search report
If the defendant argues the invalidity of the design, he/she can file a counterclaim before the court; however, this does not stay proceedings, unless the right holder requests the court to invite the defendant to submit the claim of invalidity to the OHIM
If the invited defendant does not file the claim at OHIM, his/her counterclaim before the court is deemed withdrawn and the infringement action continues
In case of staying the procedure, provisional measures can be ordered
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

29. Four possible means for simplifying and shortening the cycle of design infringement and design invalidation procedures:
(1) Enable civil courts to invalidate designs via counterclaims, in the framework of an infringement action:
Allow the defendant to contest the validity before the hearing court and allow the court to decide
Although no “prior design” defence exists as such in the EU regulation, the defendant can either plead that the design is invalid because of lack of novelty or raise a counterclaim of invalidity for this reason. In case of considering the design invalid, the infringement case will be lost by the plaintiff
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

30. (2) Allow the appeal administrative court to decide on the merits
The invalidation of a registered design usually takes place at OHIM upon request (an average of 8 months to take a decision)
The administrative decision can be appealed before the OHIM’s Appeal Board (an average of one year to take a decision)
The Board’s decision can be subject to judicial review before the EU’s Court of First Instance (over 2 years) (only four decisions have been appealed for a universe of designs)
Both the Board and the Court can not only quash the invalidity decision but decide on the merits, avoiding the “ping pong” effect
It is suggested to consider empowering the administrative courts hearing appeals against SIPO invalidation decisions to decide on the merits
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

31. (3) Use discretion to avoid oral hearings
While OHIM may organize an oral hearing when managing the invalidation proceeding, the practice of the Office is not to convene a hearing
Written submissions and written evidence are enough to make decisions
It is suggested to consider vesting wide discretion upon the Patent Review Board, as to whether it is truly necessary to convene a hearing
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

32. (4) Use the test of the “informed user”, not opinions of experts in designs
This underlines the need to regulate designs without using patent law standards
The EU system judges the validity of a design by referring to the standard of the informed user, a different notion from the patent “skilled man in the art”
By doing so, no expert opinion in necessary when making a decision on invalidity of Community designs
This allows the Invalidity Division to run the proceeding without a hearing for expert testimony or without requesting a written expert opinion
It is suggested to consider this change of standards, which means establishing specific design rules outside the Patent Law
Main conditions for protection of a design:
Novelty
Individual character
These two conditions are not subject to examination at OHIM. They can only be reviewed at Invalidity proceedings at OHIM or in the framework of counterclaims before CD courts.

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 Office for Harmonization in the Internal Market (Trade Marks and Designs)
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