Design Patents and the New Hague Agreement Option...

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

Design Patents and the New Hague

Agreement Option: Evaluating the

Benefits and Risks of Filing an IDA Understanding the Implications for Design Patent Prosecution

Today’s faculty features:

12pm Eastern | 11am Central | 10am Mountain | 9am Pacific

THURSDAY, JULY 16, 2015

Betty Berendson, Senior Information Officer, The Hague Registry, Brands and Designs Sector (BDS),

World Intellectual Property Organization, Geneva, Switzerland

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

Bernard Volken, Partner, Fuhrer Marbach, Bern, Switzerland

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U.S. Design Patents Under

the Hague System

Tracy-Gene G. Durkin, Esq.

P: 202.772.8660

tdurkin@skgf.com

Presentation Overview

• Part one: What is a design patent?

• Part two: What is the Hague Agreement?

• Part three: How the USPTO is implementing the Hague

Agreement

• Part four: Case study

Design Patents

• 35 U.S.C. §171: An Ornamental Design for an Article of Manufacture

• Scope:

• Protect article shape and/or surface ornamentation

• Protect appearance, not any structural or utilitarian features

• Design must be novel and not obvious

• Design cannot be offensive

Examples of Design Patents

What is the Hague Agreement?

• Simplified design application filing and maintenance system for

applicants in member countries

• Enables an applicant to file a single International Design Application

(IDA) to obtain design protection in multiple countries

• Administered by the World Intellectual Property Office (WIPO)

Who Can File a Hague

Application?

• Any national or person who has a domicile, habitual residence, or a real

and effective industrial or commercial establishment in a Hague member

country (all applicants must be eligible, creators do not)

• Currently 64 members including:

http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=9

USA Norway Belgium

Japan Singapore Switzerland

South Korea Turkey EU

2014 Hague Statistics

• 14,441 designs applied for

• +9.6% growth

• Top 5 classes:

• Clocks and watches

• Packages and containers

• Means of transportation

• Furnishings

• Recording and communication equipment

• Top 10 Applicants:

• Swatch

• P & G

• Phillips Electronics

• Daimler

• Volkswagen

• Samsung

• Lenovo

• Gillette

• Nestle

• Alfred Karcher (cleaning systems and products)

• Top 10 Applicant Countries

• Germany

• Switzerland

• France

• Italy

• USA

• Liechtenstein

• Turkey

• Austria

• Netherlands

• Finland

Using the Hague System

• May file an International Design Application (IDA) with either USPTO or

with WIPO

• Must designate member countries and jurisdictions where protection is

desired and pay applicable fees

• 2014: 20% designated 1 country; 25% designated 2, 10% - 10+

• WIPO reviews IDA for formalities and forwards it to the designated

intellectual property offices, and publishes the International Registration

at 6 months from filing (unless immediate or deferred publication is

requested)

• Intellectual Property Offices examine IDA under their substantive

examination system

How is Hague Changing U.S.

Practice?

• Noteworthy Changes to US Law as a Result of the US Joining Hague

• Patent term increased from 14 years from issuance to 15 years from

issuance

• Elimination of petition to have color images/drawings printed in an

issued design patent (must still include description of color drawings

in the application which will publish on the patent)

Technical Aspects of IDA Filing

• A maximum of 100 designs (related or not) can be included in a single IDA provided they are in the same Locarno Class

• 2014: 90% included 10 or fewer designs, 30% included 1 design

• If not in same Locarno class, WIPO will allow dividing into multiple IDAs

• IDAs undergo standard substantive examination according to designated Intellectual Property Offices rules

• IDAs can claim priority to an original U.S. design application(s)

• New U.S. design application can claim priority to IDAs that designate at least one country other than the United States

• WIPO requires TIFF/JPEG drawings (can file PDF with USPTO)

• Each figure must be in separate file without figure numbers

Benefits of Hague System

• More simplified process for obtaining foreign design protection

• Savings of time and money

• Use of foreign counsel may be reduced

• Ability to include up to 100 designs in the same Locarno class can

save costs

• Publishing of International Registration grants provisional rights

• Can delay publication in some countries (U.S. 6 month default)

Limitations of Hague System

• Limited membership

• Many important jurisdictions are not yet part of the system: China,

Taiwan, Canada, Mexico, Australia

• U.S. practitioners must prepare filings with knowledge of idiosyncrasies

of systems in member countries

• Number and type of drawing figures and written description

requirements vary widely among jurisdictions (shading, broken lines,

explanation of design)

• Loss of novelty provisions may not be available in all jurisdictions

(are available in Japan and Korea and can be claimed after filing)

• May not be able to amend application in all jurisdictions after filing

Limitations of Hague System

• Filings through the USPTO require local agent:

• Information disclosure statements

• Declarations

• Replies to Restriction Requirements and Office Actions

• U.S. allows only 1 design per patent (restricted designs may be filed in

another IDA claiming priority to a parent IDA, or in a domestic divisional

application)

• Replies to WIPO notices must be filed with WIPO, not USPTO

• No centralized system for filing of certified copies of priority documents

• Currency fluctuations of the Swiss Franc, but can avoid by paying WIPO

directly for all but USPTO exclusive fees (e.g. transmittal fee)

Things to Consider

• US Filing date will be lost for failure to pay $120 transmittal fee to the USPTO for indirect filing

• Failure of the USPTO to transmit the IDA will result in abandonment

• Notice of Refusal (OA) will be transmitted to WIPO who will mail to Applicant’s representative (can get notice by e-office action program)

• WIPO’s per figure/word fee structure

• http://www.wipo.int/hague/en/fees/calculator.jsp

• Can’t file a CPA of an IDA, can file a Con

• Publication opens file history of the IDA to the public through Public Pair (including any domestic benefit application)

• Include a brief description of the design if desirable for the US

particularly if using color to un-claim parts of the design

Things to Consider

• Rocket Docket petitions are available for IDAs after publication, therefore USPTO recommends waiting to file

• USPTO training <10 Examiners to examine IDAs

• IDAs will be given series 35/ application numbers

• No US maintenance fees, but WIPO or other countries may require them

• USPTO recommends using the WIPO inventor declaration if designating the U.S. rather than the USPTO form

• Filing forms are available on the WIPO website, not on the USPTO website

• http://www.wipo.int/hague/en/forms/

Case Study: Epilator

• Braun® Epilator

• Configuration

• Color Scheme

• Comfort Grips

• Head Features

Case Study: Epilator

• Hague system allows applicant/agent to file IDA directly through WIPO

or indirectly through U.S.

• Must prepare figures for acceptance in multiple jurisdictions

• Some permit digital images

• Some permit broken lines

• Some permit claiming color

• Some permit claiming components sold separately

• Creator names and declaration required in some jurisdictions (e.g. U.S.)

Design 1: Digital images of the

entire product

Design 2: Line drawings of the

entire product

Design 3: Partial design

What’s the Best Strategy?

• Include all designs in one application?

• Combine digital images with line drawings?

• File 3 applications?

• Gray scale vs. color?

Bottom Line

• Know the requirements of the designated jurisdictions as you prepare application

• Drawing requirements, fees, preliminary amendment, novelty requirements

• Even though can include up to 100 designs in one IDA, group designs based on what jurisdictions permit

• Be prepared to hire local registered agent to address issues only they can address

• Remember publication opens the prosecution to the public, but does provide provisional rights

• Consider using Hague for non-examination countries only?

• Good luck!

Thank you! Tracy-Gene G. Durkin, Esq.

tdurkin@skgf.com

Geneva,

July 16, 2015

Design Patents Under the Hague

Agreement

Betty Berendson

betty.berendson@wipo.int

Senior Information Officer

Information and Promotion Sector

The Hague Registry

What is the Hague System?

One to many relationships

• File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated

“Bundle of Rights”

• If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party. Substantive issues are governed by the law of each designated Contracting Party.

General Advantages of the Hague System

One Office for filing

One language

One currency

One international registration

One renewal

One modification

Foreign attorney or agent (first needed if refused)

Geographical Scope of the Hague System

49 Geneva Act (1999) (including EU and OAPI)

82 Jurisdictions covered

Recent: RoK, JP, USA

Hague System: Foreseen Expansion

Coming soon

The Hague System website

Hague System Fee Calculator

Filing an international application

General requirements regarding reproductions

One single view per reproduction

The industrial design must be represented alone

Neutral background

No technical drawings, dimensions or axes

Minimum size: 3cm x 3cm (at 300 dpi)

Maximum size: 16cm x 16cm (at 300 dpi)

Technical requirements regarding image files

Image format: JPEG or TIFF

Resolution: 300x300 dpi

Maximum file size (per file): 2 Megabytes

Color: RGB or Grayscale

Borders: between 1 and 20 pixels

Representation of the industrial design

DM/086605 “Trap for insects (electric)”

Representation of the industrial design

DM/084694 “Outdoor and indoor furniture with integrated lights”

1.2 1.1

Declarations made by the United States of America

Requirement of unity of design

Individual designation fee payable in two parts

Special requirements concerning the creator – declaration

of inventorship

Claim as additional mandatory content

No deferment of publication

Date of the effect of the international registration (upon

issuance of a design patent by USPTO)

Maximum duration of protection – 15 years

Security clearance requirement for the designs created in

the United States of America

Declarations made by Japan

Requirement of unity of design

Certain views of the designs required (front view, back view,

top view, bottom view, left view, right view)

Date of effect of the international registration (upon

registration of the establishment of a design right in Japan)

Declarations made by the Republic of Korea

Certain views of the designs required (set of articles;

typefaces)

Thank You!

www.wipo.int/hague/en

Webinar Hague System

16 July 2015

Filing strategies: tricks and pitfalls,

underlined with newest case law

Bernard Volken, Attorney-at-Law

volken@fmp-law.ch

Phone: +41 31 382 44 33

Fuhrer Marbach & Partner

Berne / Switzerland

Table of contents

1. Introduction (legal assumption)

2. No principle of specialty!

3. No use obligation!

4. Specific issues: protection of trade dresses and logos

5. Parameter for a tailor-made filing strategy

6. Practice/jurisdiction

7. Conclusion

Patent (in most jurisdictions): examined

tendency to consider the patent as barely

attackable

1. Introduction

Design (in most jurisdictions) = not examined

tendency: design considered as being weak

1. Introduction

• Design protection is clearly

underestimated

• Why: legal presumption of validity

turn of the prove burden

The truth is in the middle

Design infringement affirmed!

Plaintiff // Defendant

Swiss Federal Court, July 13,

2004 “Pendant”

- Defendant failed in proving lack of novelty.

- Lack of novelty is irrelevant if not proved.

- “Missing examination” of a design is partially

“compensated” by the legal presumption.

Court Plaintiff Defendant Decision

Copenhagen

Maritime and

Commercial

(22 May 2008,

No. V-0052-7)

Reisenthel

Accessoires

Zebra A/S Infringement

affirmed.

Defendant had

to pay

damages.

Copenhagen

Maritime and

Commercial

(25 Jan 2008,

No. V. 68/06)

Staff ApS Marc Lauge

Confusingly

similar trousers

Infringement

affirmed.

Defendant had

to pay

damages.

General Court C-345/13

Karen Millen vs. Dunnes,

Decision 19 June 2014

Karen Millen Dunnes

(Savida label)

(Irish High Court, unregistered Community design rights).

Karen Millen Dunnes

(Savida label)

“The right holder of a design is not required to

prove that it has individual character”.

= right holder is released from burden of prove

regarding existing novelty!

(interpretation of the General Court of article

85 II of Regulation 6/2002 [presumption of

validity - defense as to the merits])

Legal presumption = advantage in case of conflict

• for sending cease and desist letters,

• and in case of preliminary injunctions

and for negotiating licenses.

Art. 2 I Locarno Classification: “Subject to the requirements prescribed by this Agreement, the international classification shall be solely of an administrative character. Nevertheless, each country may attribute to it the legal scope which it considers appropriate. In particular, the international classification shall not bind the countries of the Special Union as regards the nature and scope of the protection afforded to the design in those countries.”

2. No principle of specialty

Decision by the UK Court of

Appeals (23. April 2008)

Spiky balls for use as laundry aids, registered designs under Nos. 000217187-0001 – 004; application date 2004:

Sold and used as a

massage ball since

The parties settled the case amicability.

However, one of the judges argued:

“…this case gives rise to points of law of

general importance which have an impact on

those not directly engaged in this particular

dispute. Where our judgment may clarify that

which has been moot and the result is of wider

public interest, I take the view that we should

make our conclusions known and so I have been

in favour in this case of handing down this

judgment.”

The Court stated:

“the right gives a monopoly over any kind of goods according to the design. It makes complete sense that the prior art available for attacking novelty should also extend to all kinds of goods”.

3. No use requirements!!

Trademarks registered for 45 classes: often confronted with “defensive trademark jurisdiction”

Problem solved with design:

- no principle of specialty

- no use obligation!

Design

• no “principle of specialty”, no “use obligation”

= huge scope of protection

• Corrective: time limitation.

Trademark

• Timely unlimited

• corrective: “principle of specialty” and “use

obligation”

“corrective

against abuse” Monopoly

“An industrial design may consist of three dimensional features, such as the shape of an article, …”.

(http://www.wipo.int/designs/en)

4. Protection of Trade dresses

and logos

Trade dresses – unfair

competition and design protection

Nestlé DM/077205 Nestlé DM/074008

1. 9th Locarno edition (1st January 2009): „graphic symbols and logos“.

2. Some Trademark Offices were reserved regarding logo-filings, what now is no longer the case. As a matter of fact, the number of logo applications significantly increased since 2009 in most jurisdictions.

Protection of Logos: Locarno class 32-00

DM/078389

BUNDESREPUBLIK

DEUTSCHLAND

DM/078399 TM IR 1124274

no principle of specialty

no use requirement

legal presumption

tailor made filing strategy

strong IP right / trump

Parameter for a tailor-made

filing strategy

Combination “different

perspectives” + disclaimer

DM/070912

Daimler AG

Disclaimer

DM/076650 Daimler AG

“The blue marked areas

are not coming into the

scope of protection, they

have the function of a

disclaimer”

DM/076222The blue

marked parts of designs 8,

9, 10, 11, 12, 13 and 14

are not coming into the

scope of the industrial

design (disclaimer)

DM/075740

different perspectives

DM/071034

Daimler AG

Photography or graphical

reproduction?

DM/066980 (15)

Lidl, DE

DM/066875 (15)

Lidl, DE

Combination of photography and

graphical reproduction!

DM/052026 (15);

EISEN GMBH, DE

Color and/or black and white?

DM/075961 (15)

Hilti, LI

DM/076048 (15)

Hilti, LI

Whole product and/or parts

thereof?

DM/047327 (15)

Cartier, CH DM/071188 (15)

Cartier, CH

100 words description?

DM/062910 (15)

Cartier, CH

One picture can say more

than 100 words.

DM/047707 (15)

Nestlé, CH

One picture can say more

than 100 words.

Does it work in practice -

what about jurisdiction?

(8 March 2012,

No. I ZR 124/10)

Infringement denied.

Plaintiff’s Design Registrations

•7 pictures of wine carafe.

•4 with socket

•3 without socket

Parts or elements of a Design

Registration are not protected

separately. As a result: the design

protection covers “carafe with socket”

and not its part (= carafe without

socket).

Be careful of the filing strategy!! Two

filings: actions would have affirmed!

General Court T-339/12

Fauteuil cubique,

Decision dated 4 February 2014

Earlier design Contested design

Differences in: seat height, seat and

back inclination.

General Court:

Overall impression produced on the informed

user must be determined based on how the

product is used: differences in design lead to

different level of comfort”.

Action dismissed.

Tribunal de

Grande Instance,

(18 December

13/04545)

ELEVEN

produced t-

shirts with

celebrities

(here:

Rihanna).

HK & CITY

sold identical t-

shirts.

The Court based on the

“Unregistered Community Design”

and affirmed the design

infringement.

(Copyright infringement was

affirmed, too).

The case was solved based on

design law (and not personality

rights).

Court of Appeal of

(05 December

14/03506)

Europlastic’s

Holder of two

(registered)

Community

designs

GERMAY

PLASTIC

- Court assessed plaintiff’s design

as valid.

- Defendant failed in proving lack

of novelty (see next slight)

design infringement

affirmed

Court Appellant Intervener Decision

September

Case T-

494/12)

RCD application Applied for a

declaration of

invalidity

• Non-visible characteristic of the

product does not relate to the

appearance.

• Applicant misunderstood Article 4 (2)

and (3) RCDR (requirements for

protection).

registration refused.

Court Appellant Respondent Decision

(14 June 2012,

Case R

2194/2010-3)

Respondent destroyed novelty

based on a Japanese patent.

RCD declared invalid.

Court Design

Holder

Invalidity

Applicant

Decision

(10 October

Case R

1682/201-3)

RCD Filed application

for a declaration

of invalidity

based on earlier

intern. trademark

(IR-Mark)

Trademark information on the

packaging not relevant for consumer.

RCD declared invalid.

Oberlandsgericht

Düsseldorf

(24 July 2012,

No. I-20 U

52/12)

Dr. Oetker

reg. design:

Trade dress:

Infringing product:

Trade dress:

Infringement

denied.

Different overall

impressions:

“Spiral

element/movement

impression” of the

plaintiff design is

missing.

Limited scope of

protection of the

plaintiff’s design?

Decision of the Oberlandgericht

Hamm (Germany)

dated February 24, 2011

Defendant Plaintiff

• The court affirmed the validity of the

respective Design-registration from 2001. It

also affirmed its copy right character.

• However, the Court argued with different

overall impressions, due to differences in

nose, face, paw.

Design protection is like a

unicycle:

not easy to ride, but if you

manage it, it’s a lot of power

and flexibility!

Bernard Volken

volken@fmp-law.ch

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