design patents and the new hague agreement option...
TRANSCRIPT
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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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S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved.
U.S. Design Patents Under
the Hague System
Tracy-Gene G. Durkin, Esq.
P: 202.772.8660
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 6
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
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 7
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
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 8
Examples of Design Patents
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 9
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)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 10
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
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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
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2014 Hague Statistics
• Top 10 Applicants:
• Swatch
• P & G
• Phillips Electronics
• Daimler
• Volkswagen
• Samsung
• Lenovo
• Gillette
• Nestle
• Alfred Karcher (cleaning systems and products)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 13
2014 Hague Statistics
• Top 10 Applicant Countries
• Germany
• Switzerland
• France
• Italy
• USA
• Liechtenstein
• Turkey
• Austria
• Netherlands
• Finland
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 14
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
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 15
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)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 16
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
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 17
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)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 18
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
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 19
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)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 20
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
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 21
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/
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 22
Case Study: Epilator
• Braun® Epilator
• Configuration
• Color Scheme
• Comfort Grips
• Head Features
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 23
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.)
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 24
Design 1: Digital images of the
entire product
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 25
Design 2: Line drawings of the
entire product
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 26
Design 3: Partial design
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 27
What’s the Best Strategy?
• Include all designs in one application?
• Combine digital images with line drawings?
• File 3 applications?
• Gray scale vs. color?
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 28
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!
S K G F. C O M © 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C. All Rights Reserved. 29
Thank you! Tracy-Gene G. Durkin, Esq.
Geneva,
July 16, 2015
Design Patents Under the Hague
Agreement
Betty Berendson
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.
31
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)
32
Geographical Scope of the Hague System
49 Geneva Act (1999) (including EU and OAPI)
82 Jurisdictions covered
Recent: RoK, JP, USA
33
Hague System: Foreseen Expansion
Coming soon
34
The Hague System website
35
Hague System Fee Calculator
36
Filing an international application
37
Filing an international application
38
Filing an international application
39
Filing an international application
40
Filing an international application
41
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)
42
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
43
Filing an international application
44
Representation of the industrial design
DM/086605 “Trap for insects (electric)”
45
Representation of the industrial design
DM/084694 “Outdoor and indoor furniture with integrated lights”
1.3
1.2 1.1
1.4
2.1
2.2
46
Filing an international application
47
Filing an international application
48
Filing an international application
49
Filing an international application
50
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
51
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)
Maximum duration of protection – 20 years
Declarations made by the Republic of Korea
Certain views of the designs required (set of articles;
typefaces)
Maximum duration of protection – 20 years
52
Filing an international application
53
Filing an international application
54
Filing an international application
55
Filing an international application
56
Filing an international application
57
Thank You!
www.wipo.int/hague/en
58
Webinar Hague System
16 July 2015
Filing strategies: tricks and pitfalls,
underlined with newest case law
Bernard Volken, Attorney-at-Law
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
60
Patent (in most jurisdictions): examined
tendency to consider the patent as barely
attackable
1. Introduction
61
Design (in most jurisdictions) = not examined
tendency: design considered as being weak
1. Introduction
62
• Design protection is clearly
underestimated
• Why: legal presumption of validity
turn of the prove burden
The truth is in the middle
63
Design infringement affirmed!
Plaintiff // Defendant
Swiss Federal Court, July 13,
2004 “Pendant”
64
- 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.
65
Court Plaintiff Defendant Decision
Copenhagen
Maritime and
Commercial
Court
(22 May 2008,
No. V-0052-7)
Reisenthel
Accessoires
Zebra A/S Infringement
affirmed.
Defendant had
to pay
damages.
66
Court Plaintiff Defendant Decision
Copenhagen
Maritime and
Commercial
Court
(25 Jan 2008,
No. V. 68/06)
Staff ApS Marc Lauge
A/S
Confusingly
similar trousers
Infringement
affirmed.
Defendant had
to pay
damages.
67
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)
68
“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])
69
Legal presumption = advantage in case of conflict
• for sending cease and desist letters,
• and in case of preliminary injunctions
and for negotiating licenses.
70
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
71
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
2002:
72
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.”
73
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”.
74
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!
75
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
76
“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
77
Trade dresses – unfair
competition and design protection
Nestlé DM/077205 Nestlé DM/074008
78
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
79
DM/078389
BUNDESREPUBLIK
DEUTSCHLAND
80
DM/078399 TM IR 1124274
81
no principle of specialty
+
no use requirement
+
legal presumption
+
tailor made filing strategy
=
strong IP right / trump
82
Parameter for a tailor-made
filing strategy
83
Combination “different
perspectives” + disclaimer
DM/070912
Daimler AG
84
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)
85
DM/075740
86
different perspectives
DM/071034
Daimler AG
87
Photography or graphical
reproduction?
DM/066980 (15)
Lidl, DE
DM/066875 (15)
Lidl, DE
88
Combination of photography and
graphical reproduction!
DM/052026 (15);
EISEN GMBH, DE
89
Color and/or black and white?
DM/075961 (15)
Hilti, LI
DM/076048 (15)
Hilti, LI
90
Whole product and/or parts
thereof?
DM/047327 (15)
Cartier, CH DM/071188 (15)
Cartier, CH
91
100 words description?
92
DM/062910 (15)
Cartier, CH
One picture can say more
than 100 words.
93
DM/047707 (15)
Nestlé, CH
One picture can say more
than 100 words.
94
Does it work in practice -
what about jurisdiction?
95
Court Plaintiff Defendant Decision
BGH
(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!
96
General Court T-339/12
Fauteuil cubique,
Decision dated 4 February 2014
Earlier design Contested design
Differences in: seat height, seat and
back inclination.
97
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.
98
Court Plaintiff Defendant Decision
Tribunal de
Grande Instance,
Paris
(18 December
2014,
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).
99
Court Plaintiff Defendant Decision
Court of Appeal of
Paris
(05 December
2014,
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
100
101
Court Appellant Intervener Decision
GC
(9
September
2014,
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.
102
Court Appellant Respondent Decision
BoA
(14 June 2012,
Case R
2194/2010-3)
Respondent destroyed novelty
based on a Japanese patent.
RCD declared invalid.
103
Court Design
Holder
Invalidity
Applicant
Decision
BoA
(10 October
2014,
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.
104
Court Plaintiff Defendant Decision
Oberlandsgericht
Düsseldorf
(24 July 2012,
No. I-20 U
52/12)
Dr. Oetker
reg. design:
Trade dress:
Aldi
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?
105
Decision of the Oberlandgericht
Hamm (Germany)
dated February 24, 2011
Defendant Plaintiff
106
• 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.
107
Design protection is like a
unicycle:
not easy to ride, but if you
manage it, it’s a lot of power
and flexibility!
108