FRYER* INSTITUTE NEWSLETTER NO. 8 ON INDUSTRIAL DESIGN PROTECTION

13 pages

JUNE 28, 2008

Prepared by William T. Fryer, III

1.  Introduction
2.  Product part replacement -- Legislation and debate:  Is there utility patent or design patent infringement  when a product is repaired?
3.  U. S. Senate held hearing on product piracy
4.  U. S. PTO 2008 Design Patent Day reports
5.  Major ppending U. S. appellant cour casee reviewing U. S. design patent infringement law
5.  U. S. Senate ratifies the Geneva Act of the Hague Agreement -- Next Step is implementation.
6.  Recent U. S. PTO design patent statistics analysis
7.  Trend continues in adopting market entry design protection
8.  Recent WIPO book on how to teach IP law includes industrial design law.

Introduction.  Active participation in many of the important events on industrial design protection occurring since the last newsletter publication was one of  the reasons that this issue was so slow in being published.  It was a choice made to be involved and let this publication about these events take a little more time to reach you.  I will try to be more prompt with providing this newsletter.

One of the purposes of this newsletter is to provide resources for others to evaluate what is happening in the design protection world.  At the same time this newsletter needs to provide a perspective on what is being reported.  It was clear that many of the important, recent events related to design protection had to completed at least part of their cycle  before a perspective could be prepared.   The time has come.

The topics discussed below are recent major developments in design protection since .  On a time line basis, starting from the most recent event, the expanded consideration of the repair parts topic comes up first on the list.  This topics forces a complete review of the operation and purpose of national design laws, and the U. S. has started this review, with a Congressional hearing and Town Meetings.  This newsletter has an extensive introduction to the U. S. repair infringement law and recent developments.  A recommendation is to have a global discussion of this topic, guided by WIPO.

Product design piracy has been a continuing concern, and the U. S. administration and Congress have been increasingly active in trying to control this trade problem, as evidenced by the recent U. S. Senate hearing on this topic which can be reviewed  through an  Internet Webcam presentation.

The U. S. Patent and Trademark Office and the Federal Circuit, Court of Appeals have been significant contributors to helping to improve U. S. design patent law,  with  the annual U. S. Patent and Trademark Office Design Patent Day reports that are available from this web site.  The Federal Circuit awaited  Egyptian Goddess decision will have a dramatic impact on design patent infringement.  Resources needed to review this development are provided on this web site.

The future for more effective global design protection has been become significantly brighter, as the  Geneva Act of the Hague Agreement has gain more members and is under serious consideration by major other major industrialized and developing.  There is major progress reported for the U. S.   An update is given on U. S. Parent and Trademark Office design patent statistics, and a way is described to keep track of progress of U. S. Patent and Trademark Office  design patent pendency.  This information is important in preparing the U. S. For Geneva Act membership.

In a trend analysis, there is an update on positive acceptance of market entry design protection, as shown by way of example from the EU and U. S. accomplishments in new laws and proposed legislation.

Many of the topics presented in this newsletter are interrelated.  One topic presented could have an important impact on all of these topics, by enabling governments and the public  to understand intellectual property law.  This newsletter report the recently published WIPO book; Teaching of  Intellectual Property, Principles and Methods.  This book should have a major impact in helping the academic community prepare the next generations to address the role of intellectual property law.   There is a chapter on Teaching Industrial Design Law.
 

I.  Product Part Replacement Legislation and Debate:  Is There Utility  Patent or Design Patent Infringement When a Product is Repaired?

Summary:    The U. S. Congress is considering legislation that would permit part manufacture and use of that part to repair a product without utility patent or design patent infringement on that part if the product repair was needed to restore the appearance of the product.

A major new development that would affect the intellectual property rights of many companies has begun in Congress.  The same debate is occurring in the European Union (EU) over the scope of infringement rights under the Community Designs Regulation and the right to repair products that have intellectual property law protection. An excellent review of the current EU debate, that provides access to  key official EU documents on the dispute, is found in the EurActiv newsletter of November 21, 2007, in an article titled: Car makers to loose design protection for spare parts.   This article is on the EurActiv web site at URL:   http://www.euractiv.com/en/transport/carmakers-lose-design-protection-spare-parts/article-168557.

In the U.S. Congress Representative Zoe Lofgren introduced a repair parts bill, H.R. 5638 (110th Cong., 2d Sess.), on March 13, 2008, that follows the proposed EU broad exclusion from infringement for repair.  This bill would add a new subsection (j) to the Patent Act at 35 U.S.C. ' 271, providing as follows:

 "(j) it shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States any article of manufacture that itself constitutes a component part of an other article of manufacture, if the sole purpose of the component part is for the repair of the article of manufacture of which it is a part so as to restore its original appearance."

It is clear from this proposed legislation that utility patent and design patent infringement rights will be eliminated for repair parts that contribute to product appearance.  While the main dispute is between automobile manufacturers that produce original car parts and competitive suppliers, the EU and the U.S. legislation have chosen to make the exclusion apply to repair parts for all products.

At the House Judiciary Committee, Subcommittee on Courts, The Internet and Intellectual Property hearing on February 14, 2008, there were witnesses representing the automobile manufacturers and consumer interest groups.  While this hearing just touched the surface of the issues, it is a warning that there is substantial public interest support for this type of legislation.   The witnesses' statements can be found on the Subcommittee web site at URL:   http://judiciary.house.gov/committeestructure.aspx?committee=3 .  Professor Fryer testified at the hearing and his oral testimony dealt briefly on this topic.   His statement is available by clicking on the following link: FRYER STATEMENT.

This report is too limited to analyze the full legal history of U.S. law regarding the repair exemption from patent infringement  and reconstruction infringement for all situations.  At most only brief observations can be made, raising issues that need further research and analysis.  It is clear from U. S. case law that the repair non-infringement principle has been established for a product purchased from the owner of a utility patent on the product, and that reconstruction of a product is an infringement.  A very important U.S. Supreme Court case on this topic is Aro Mfg. Co. v. Convertible Top Replacement Company, 365 U.S. 336 (1961).  In this case replacement of an automobile convertible top fabric was permitted even thought the convertible top mechanism, including the fabric cover, was patented.  The court held that even if the top would have been uniquely created for the patented device, there would not be contributory infringement from the replacement that was, in effect, a repair of the patented product..  While this case was limited to a utility patents, the question is whether the principle would apply to design patents?  So far no design patent case on the principles of repair or reconstruction have been found.  There is a strong argument that same conclusion on non- infringement  would result for parts replaced that were protected by design patents to retain the product appearance..  In their analysis the above mentioned Aro decision concluded that purchase of the automobile gave the purchaser the right to repair with out utility patent infringement.  The analogy of the car top fabric cover non-infringement by  contributory infringement issue in the above mentioned Aro case to a design patent on a product part is  worth review.

A related case was Aro Manufacturing Co., Inc., et al, v.  Convertible Top Replacement Co., Inc., 377 U.S. 476 (1964), that involved a situation where the repair was on a car that had not been purchased from the utility patent owner, or under a license from the patent owner.  The court held there was no license to repair.  It appears that the U.S. already has resolved the basic right of repair for utility patents, raising the questions.  If the same law applies to design patents, the question should be asked whether this legislation is needed, or whether it should be tailored to fit particular industry situations.  In this respect, it may be the original parts industry that will be asking for greater  protection of its part using design patents.  On the other hand, the situation of a incorporating parts made and patented by other companies must be given consideration, or their parts will be free to reproduce without infringement.  This disincentive to use outside sources of parts could have significant negative effect on innovation and economic development.  There is extensive U. S. case law on the right of a product purchaser to repair the a purchased  product. This case law needs to be analyzed further to arrive at answers for the questions raised above.

The primary issue that needs to be resolved is the effect of a utility patent or design patent on the part that is being replaced, when there is a patent on the combination of the parts, or no patent on the combination.   The challenge to patent rights is squarely aimed at allowing an infringement exception for product repair, where there is a utility patent or design patent on the part, raising a wide range of further issues on the economic benefit and who should receive it.  These questions are fundamental to the U. S. Patent system.

At the same time, another House bill has been filed by filed related to motor vehicle repair:  Motor Vehicle Owners Right to Repair Act of 2007, H.R. 2694 (110th Congress, 1st sess.).   This other legislation needs to be reviewed also.  It is apparent that the a major, coordinated U. S. and EU legislative lobbying program is underway on this topic

In response to the aforementioned patent related legislation, the U. S Patent and Trademark Office (U. S. PTO) initiated a series of Town Meeting for public comments on the need for this legislation.  Written statements can be filed, due July 15, 2008.  It is expected that these statements and the oral testimony will be posted on the Internet by the U. S. PTO, at URL: http://www.uspto.gov.    A summary of the Washington D.C. Town Meeting can be found volume76, June 20, 2008, issue of the BNA, Patent, Trademark and Copyright Journal, beginning on page267.  These meetings were planned to help the U. S. PTO develop the administration's  recommendation to Congress on the legislation.

In view of the EU similar discussion on this topic, it is suggested that a review be conducted on an international level, under the leadership of the World Intellectual Property Organization (WIPO).  As evidenced by the next topic, product piracy is a major concerned and the repair issue legislation will have a significant  impact on the ability to control product piracy.
 

II.  U. S. Senate Held a Hearing on Product Piracy

Summary: The concern over product piracy and its effect on product safety was discussed at a U. S. Senate hearing on June 17, 2008.  The primary focus was on fake medicines and car repair parts, where recent news events have continued to show that people can be killed by pirated medicines and major economic impact can occur.

The U.S. administration has increase its coordination of the management of anti-piracy enforcement in the U. S. and in other counties that are sources of pirated goods.  The Senate Judiciary Committee web site, on the hearing page for June 17, 2008, has the written testimony and a Webcam of the hearing at URL:   http://judiciary.senate.gov/hearing.cfm?id=3416.   An overview of these developments and a review of the Senate hearing testimony can be found in BNA, Patent, Trademark and Copyright Journal, volume 76, June 20, 2008, beginning on page 262.

There is a direct connection between the anti-piracy enforcement program and the need for foreign intellectual Property protection, across a wide range of intellectual property laws.   Industrial design protection , along with protection from other IP laws. should be strengthened and made more accessible at reasonable costs.  The Geneva Act of the Hague Agreement for industrial designs is the latest treaty for improved filing for design protection.  The U. S. has taken a significant step in a global initiate toward improving the opportunity for U. S. design owners to protect their designs in other countries.  This goal needs to be completed by the  U. S. administration's implementation of the Geneva Act, as discussed below in this newsletter under the Geneva Act Topic V and on this web site's Geneva Act of the Hague Agreement Information Center. [link to the center home page]
 

III.  U. S. PTO 2008 Design Patent Day Reports

Summary: This year's U.S. PTO Design Patent Day provided an opportunity for attorneys and others interested in design protection to meet with the U. S. PTO Design Group staff and U. S. PTO senior management and discuss design patent use.   Selected reports from this meeting are included in this review on the Design Group operation on how to improve the preparation of design patent applications.

For the third year in a row the U. S. Patent and Trademark Office (PTO) cosponsored Design Patent Day at the PTO main building in Alexandria, Virginia.  The event was held on April 14, 2008, from 9 a.m. to 4 p.m., also sponsored by the American Intellectual Property Law Association, the Intellectual Property Owners Association and the American Bar Association, Section of Intellectual Property Law.   Each of these organizations contributed financially and in other ways to the project.  This conference had over 200 persons in attendance.

The morning program included a welcome from Commissioner of Patents John Doll, with his review of the progress made in the Design Group.  He stated the production and quality performances of this group in the last few years have been outstanding.  He stressed the importance of design patent protection.  There were presentations in the morning by the Design Group staff and other PTO managers on topics suggest by members of the bar and design examiners.  In the afternoon there were presentations by attorneys and company managers that illustrated how design patents are important to a company=s success and basic procedures for obtaining design patents.  Highlights of the program included a presentation by Michelle Berryman, President of the Industrial Designers Society of American on recent industrial design products awards.  Rob Katz from Banner & Witcoff, and Brendan J. Reilly from Nokia, illustrated the importance of design patents in preventing cell phone design piracy.  Gregory Adams from Energizer Corporation demonstrated how his company used design patents and utility patents to protect its products.  Several reports, described below, were given at the meeting by U. S. PTO Design Group staff.  This format has been used at each annual meeting, and it has been well received.  The cooperation of the PTO Design Group 2900 examiners and other staff, and the Group Director, Jacquelyn Stone, was outstanding.

One of the big features of this meeting was that many of the design examiners attend, allowing practitioners and examiners to share ideas on key practice topics presented during the program and to chat informally.  There were several breaks and a lunch provided to facilitate discussions between attorneys and examiners.  This event has been a key factor in the increased visibility of design patent practice in the PTO and nationally, and establishing essential communications between the bar and the Design Patent Group.

The PTO provided copies of Power Point program files (PDF type) for several of its presentations.  A selected group of these files are accessible below.

A.  Technology Center 2900 (Design Group) Operation and Design Issues Joel Sincavage (TC 2900 Design Patent Policy and Planning Advisor.  This report included information on the current Design Group organization, operation statistics and suggestions on how to avoid several problems in preparing design patent application.  A copy of this report can be reviewed by clicking on the following link: SINCAVAGE REPORT ON U. S. PTO OPERATION AND RECOMMENDATIONS FOR DESIGN PATENT APPLICATION PREPARATION .

B.  Accelerated and Expedited Examination Robert Spear (Design Patent Specialist, TC 2900).  This report describes the ways to speed up the grant of a design patent.  A copy of this report can be reviewed by clicking on the following link: SPEAR REPORT ON ACCELERATED AND EXPEDITED EXAMINATION.
 

IV.  Major Pending U. S. Appellant Court Case Reviewing U.S. Design Patent Infringement Law

Summary: The Federal Circuit, Court of Appeals, held an en banc (full court) review on June 2, 2008, of the Egyptian Goddess case appeal that will determine whether the point of novelty test for infringement remains in U. S. design patent law and how to determine design patent infringement.

 In Egyptian Goddess v. Swisa, 498 F.3d 1354, 84 U.S.P.Q.2d 1046, (Fed. Cir. 2007), the Federal Circuit, Court of Appeals (Federal Circuit)  decision of a panel of three judges held , essentially, that the point of novelty test that must be present for infringement of a design patent has to included a requirement that the point of novelty not be a mere trivial difference from the prior art.   The Federal Circuit panel decision is available by clicking at the following link: FEDERAL CIRCUIT EGYPTIAN GODDESS PANEL DECISION.

In the opinion of many attorneys and professors the panel's decision further confused the point of novelty test.  There was an appeal to the Federal Circuit for an en banc review (all the judges hearing the appeal).  Several petitions were filed encouraging the Federal Circuit to have an en banc review and to consider the broader questions of whether the point of novelty test should be used, and if so how.   The Federal Circuit granted the request for en banc review and vacated the earlier panel decision.  The Court Order can be viewed by clicking on the following link: COURT ORDER VACATING EGYPTIAN GODDESS PANEL DECISION.

The briefs have been filed in the Egyptian Goddess case, along with several amicus curiae briefs.  One of these amicus curiae briefs was filed by Professor Fryer, who conclude, as did other amici briefs,  that the point of novelty test should be eliminated and replaced by a test that set up by a U.S. Supreme Court case, Gorham v. White, 81 U.S. 511 (1871).  His brief is accessible on this web site by clicking on the following link:  FRYER EGYPTIAN GODDESS AMICUS CURIAE BRIEF.  The American Intellectual Property Law Association (AIPLA) amicus brief can be found on the AIPLA web site at URL:  http://www.aipla.org/content/navigationmenu/ip_issues_advocacy/amicus_briefs/amicus_briefs1.htm  .  The Intellectual Property Owners Organization (IPO) amicus curiae brief can be located at its web site at URL: http://www.ipo.org/AM/Template.cfm?Section=Amicus_Briefs&CONTENTID=17322&TEMPLATE=/CM/ContentDisplay.cfm .
 

The oral argument can be download for a limited period of time from the on the Federal Circuit web site home page at URL:  http://www.cafc.uscourts.gov/.   If a copy is needed after the Federal Circuit web site has removed the file, a copy can be sent to an interested party by this web site administrator.  Professor Fryer attended the oral argument and noted that all the judges were very involved in asking questions.  The key question that never received a full answer from the respondent, in support of the current point of novelty law, was how to determine what is the point of novelty for a design patent.  The question, used during the oral argument as an example,  involved a patented design that was a combination of old features that differed from the each prior reference in different ways.  The judges' appear to suggest that the point of novelty test was not workable, and the panel's  triviality test had little support from these judges.   The Court's en banc decision should be a major step in clarifying the design patent infringement test.

While the goal of global  harmonization for the determination of infringement is not within the scope of the Federal Circuit role, the guidance from other industrial design protection systems, such as in the EU Community Design Regulation law, would be helpful guidance.  If the Gorham decision approach is followed, it is submitted that the global harmonization of design patent infringement would become closer.
 

V.  U. S Senate Ratifies the Geneva Act of the Hague Agreement Next Step Implementation

Summary: The goal of simplifying U.S. design owner global  filing for design patent protection is one step closer.  The procedure for U.S. ratification of the Geneva Act of the Hague Agreement has been completed, with the Senate approval of the treaty.  The next step is implementation of the treaty by Congress enacting a few changes in the U. S. patent law and the U. S. PTO adopting the necessary rules.

In general, the Geneva Act has the purpose of simplifying the filing for design protection in member countries.  It parallels in some respect the purpose of the Patent Cooperation Treaty for utility patents, and the Madrid Protocol for trademarks.  A single application is prepared in English and the member countries where protection is desired are selected.  WIPO administers each of these treaties and forwards an International Registration (IR) document to the selected countries.  The IR goes through the same review as a national application and, when accepted, creates the same protection.

There have been several revisions of the Hague Agreement to improve its usefulness.  The latest version was approved at a diplomatic conference in 1999.   It allows members with novelty examination systems, such as the United States to interface without making significant changes in their national design patent laws.  The Geneva Act became operational in 2003.  As of June 16, 2008, there were 27 member countries.  The recent membership of OIPA and the EU were major events, in moving toward global acceptance of the Geneva Act.  These contracting parties are regional organizations, providing design protection in member countries.

The current Geneva Act members list is:  Albania (March 9,2007, Armenia (July 13, 2007), Botswana (December 5, 2006), Croatia (April 12, 2004), Egypt (August 27, 2004), Estonia (December 23, 2003), European Union (January 1, 2008), France (March 18, 2007, Georgia ( December 23, 2003), Hungary (May 1, 2004), Iceland (December 23, 2003), Kyrgyzstan (December 23, 2003),  Latvia (July 26, 2005), Liechtenstein (December 23, 2003),  Moldova (December 12, 2003), Mongolia (January 1, 2008, Namibia ( June 30, 2004), OAPI (September 16, 2008), Romania (December 23, 2003), Singapore (April 17, 2005), Slovenia (December 23, 2003), Spain (December 23, 2003), Switzerland (December 23, 2003), The former Yugoslav Republic of Macedonia (March  22, 2006), Turkey (January 1, 2005), and Ukraine (December 23, 2003).

Recent development highlights of the Geneva Act include electronic filing for submitting IR applications to WIPO.  Each published IR documents can be searched online.  These resources can be found on the WIPO web site at: URL: http://www.wipo.int.  Statistics on the Geneva Act use are available on the WIPO web site.  The latest data is for 2006.  After European Community Design Regulation became effective the number of Geneva Act filings decreased, as many of the Geneva Act members were European Community countries.   The expectation is that, when the major industrialized countries become members, the Geneva Act will become globally accepted as the way to established design protection, with links to all regional design protection systems.

The statistics for 2003-2006 show an significant use of multiple design IR, with approximately ten designs in one application, a feature of the system that allows significant cost saving.

In the United States there was exciting news when the U.S. Senate ratified the Geneva Act on December 7, 2007 (Treaty 109-21), after a very short review period and one hearing.  Apparently there was no opposition.  The American Bar Association, Section of Intellectual Property Law (IP Section) expressed its support for the treaty ratification in a letter to President Bush.  Also, the American Intellectual Property Owners= Association supported the United States ratification of the Geneva Act.  The Senate approval adopted the recommendations of the State Department, that were part of President Bush's letter,  to interface the United States design patent system under treaty provisions allowing for novelty examination countries.   A detailed State Department statement on the reasons for these declarations was included as an attachment to President Bush=s letter transmitting the treaty to the Senate Foreign Relations Committee.  An article analyzed these declaration and concluded that they were the appropriate way for the United States to interface its design patent system with the Geneva Act, William T. Fryer III, The Hague Agreement on the Protection of Industrial Designs: Strategies to Use and U.S. Choices in Ratification of the Geneva Act, 89 J. Patent & TM Office Society 661 (2007).   A Japanese language version of this article was published in the 52 Journal of the Japanese Group, A.I.P.P.I. - Japan 527-541(No. 7, August 2007)AIPPI-Japan Journal.  A  version of this article with President Bush's letter submitting the Geneva Act for ratification to the U. S. Senate, and including the attached State Department recommendations, can be reviewed by clicking on the following link:  FRYER ARTICLE ON GENEVA ACT U. S. RATIFICATION.

The next step for the United States to become a member of the Geneva act is to implement the treaty, by enacting conforming legislation on a few needed changes, and to adopt the necessary rules.  PTO had drafted implementing legislation and sent it to key congressional leaders in July 2007.  A bill on the proposed legislation has not been filed.  The draft legislation with an analysis of the Geneva Act can be reviewed, by going to the following link to the U. S. Department of Commerce web site, at URL:  http://www.ogc.doc.gov/legis_reg_letters.html#110th, and finding the July 20, 2007, document labeled Draft Bill and referring to the Hague Agreement.

The action needed now is for United States companies that want to have an improved way of obtaining foreign design protection contact the PTO Director and request that the legislation be filed and indicate they will actively supported the legislation.  In addition, the PTO should initiate preparation of the rules to implement the Geneva Act.   Members of Congress can be another source of support for the Geneva Act implementation.  Until the U.S. law and rules are approved, the United States cannot take the final step to join the Geneva Act, which is to deposit the document for adherence to the Geneva Act with WIPO, with the supporting documents that evidenced its is ready to process IR applications as of a specified date.

It is puzzling why the United States executive branch major effort to reduce design piracy through its STOP program has not included a priority for the United States to join the Geneva Act.  It is clear that the Geneva Act will provide a useful option for obtaining foreign design protection to help stop piracy.  Global membership in the Geneva Act would give many companies a new, more economical and simplified way to obtain design protection and bring the world community.   It would provide a forum that could lead to more international cooperation on improving the procedural uniformity and even influence more uniform national design patent law changes.
 

VI.  Recent U. S. PTO Design Patent Statistics Analysis

Summary: This analysis of recent U. S. PTO design patent statistics identifies ways to reduce design patent application pendency.   While progress has been made, considering the increase in number of filings, more progress is needed.  The U. S. PTO needs to set its goal to reduce pendency for all design patent applications to less than 12 months to obtain a first office action, as required to be a member of the Geneva.    This goal is reachable, based on the opportunities available for improvement.

It is very important to review periodically the U. S.  PTO statistics for design patents, as a measure of the U. S. PTO performance and company interest in obtaining design patents.  Some statistics on the U. S. PTO performance was given in the 2008 U. S. Design Patent Day report by Mr. Sincavage in Topic III above.  Analysis of this data can suggest changes that need to be made to improve the usefulness of design patents.

This report provides a statistical  update on applications for design patents, design patents issued for Fiscal Year (FY) 2004 - 2006, a review of the FY2007 status categories for pending design patent applications, the design patent pendency for Design Patent Group 2900.  In addition this report makes some observation using this data.  The primary sources for this data were the U. S.  PTO FY 2006-2007 annual report, U. S. PTO 2007 Performance and Accountability Report, and the U. S. PTO Official Gazette.  These documents are on the PTO web site at URL: http://www.uspto.gov accessed through the Site Index, under the Annual Report and Official Gazette headings, respectively.

The number of design patent applications filed increased from 23,457 in FY 2004 to
26, 626 in FY 2007, a 13.5% increase over four years and an average increase of 3.3% per year during that period.  The number of design patents issued during that period increased from 16,533 to 22,544, an increase of 36.4%  and an average annual increase of 9.1%  In 2005 the design patents issued took a dive to 13, 395 from the previous year of 16,533, but the number increased to 19,072 in 2006.  This change was reported to be due to printing problems.

The difference between design patent applications filed and granted each year for this period was 6925(FY 2004), 11,909 (FY 2005), 6781 (FY 2006) and 4082 (FY 2007).  A significant reason for the backlog was printing delay.  It is apparent from this data that the U. S. PTO fell behind in its processing of applications in 2005, and it caught up significantly in 2007.

For FY 2007 the U. S. PTO annual report showed a backlog of 39,131 design patent applications.  There were 4,130 applications in the pre-examination processing stage; 24,750 under examination, including 5,222 in undocked status, 14,284 awaiting first office action, 4,043 awaiting response by applicant, 1,096 awaiting action by examiner, 104 applications on appeal, and one in interference, with special notes that explain unique situations.  In the post grant stages there were a total of 10, 251 design patent applications, including 5,841 awaiting issue, 4,409 awaiting printing, and one application held for secrecy reasons.  The data on the pre-examination stage shows a considerable backlog of applications for first office action.  The post examination stage data identifies a major backlog of design patent applications, about one-third of the pending cases.   An interesting calculation is the percentage of design patent applications awaiting printing as a percentage of total applications file in a FY, and the same computation for utility patents.   It appears that a significantly greater percentage of utility patents printed.

This design patent U. S. PTO data suggests that design patent application pendency could be reduced if the post examination stage was shortened, particularly the printing of patents. The PTO should evaluate the need for design patent owners to have prompter design patent grant.

The Official Gazette (OG) has a report on pendency up to first office action of patent applications for each Technology Center.  Since Design Group 2900 is attached to Technology Center 1700, there is a separate report for the design group as a part of the Technology Center 1700 OG listing.  This data can be found by going to the U. S. PTO electronic OG web page, selecting an OG issue, going to the Notices page, and choosing the Technology Center page where the application pendency for Design Group 2900 is found at the right in this listing.  The pendency report gives the oldest design patent application that received a first office action in a defined period.  This number is determined by taking the average filing date of applications in the group receiving a first office action in the last three months.  The April 1, 2008, OG reported the oldest pending application acted was January 15, 2006, a pendency of  approximately 26 months for the oldest filed design patent application for the oldest filed design parent application  to receive a first office action,  This report is a good source of data on U. S. PTO performance.

One conclusion is clear from design patent filing data, in terms of the interest in companies filing design patent applications.  The number of filings has increased steadily
 
 
 

VI.  Trend Continues in adoption of Market Entry Design Protection

Summary: After almost ten years,  it is time to review the status of product market entry unregistered design protection.  Professor Fryer started  this review in 1999.   Several recent events show an acceptance of this form of protection, in the EU and in the U. S., for example.

A.  Introduction.

In 1999 Professor Fryer's identified the trend in global protection of industrial design at the time a product market entered its market (market entry protection), in his article,    The Evolution of Market Entry Industrial Design Protection: An International Comparative Analysis, EIPR 1999 21(12), 618-623.  A copy of this article can be reviewed by clicking on the following links: FRYER EIPR ARTICLE.  This trend has continued.

For example, The EU Community Design Regulation has now been operational since 2003 with unregistered design protection commencing at the time of product market entry.  This feature appears to have been accepted by relevant markets to create a reasonable level of fair competition.  Evidence of this effective assimilation of unregistered design protection can be found in the review by Richard Arnold QC, Enforcement of Community Designs in UK Courts, found on the EU Trademark and Community Designs Office Web site, at URL:  http://oami.europa.eu/EN/office/ejs .  European Judges' Symposiums, 2007 Speeches.  The continuing experience gained with the UK (unregistered) Design, discussed in the Fryer EIPR article is additional support for this conclusion.

In the U. S. the trend to protect industrial designs at market entry has continued more slowly than in the EU, but there are significant signs that more interest in this protection is developing.  The U. S. Copyright Office, U. S. PTO and boat manufacturing industry five year review of the Vessel Hull Design Protection Act recommended it continue.  The details on this five year review can be found on this web site in Newsletter No. 7 and earlier newsletters have the history of the legislation.  The other examples are  proposed U.S. legislation for the fashion originating design industry that would provide unregistered protection,  and a proposed  amendment to the Vessel Hull Design Protection Act to improve its procedures.

B. Fashion Originating Industry.

The 110th Congress continued review, started in the 109th Congress, of legislation for fashion design protection.  .  A hearing was held, February 14, 2008, on the Fashion Piracy Prohibition Act (FPPA), H.R. 2033 (110th Cong., 1st Sess.), by the House Judiciary Subcommittee on Courts, The Internet and Intellectual Property (Subcommittee).  Witnesses spoke for and against this legislation.  Their statements can be found on the Subcommittee web site at URL:   http://judiciary.house.gov/committeestructure.aspx?committee=3 .

The FPPA uses the basic protection structure of the Protection of Original Designs Law, 17 U.S.C. '' 1301-1332, the same law that forms the basis for vessel hull design protection,  This law prevents copying upon market entry of the product, without registration, or upon registration.  The FPPA protection is tailored to stop immediate piracy of fashion industry products, allowing a three month period to file for a registration after market entry and a maximum 3 year protection term.  Opponents to this bill were concerned that it would discourage use of fashion trends and create extensive litigation.  There was discussion at the hearing that a compromise may be reached.

Discussion in Congress  on enacting this legislation is still occurring, with concern over the piracy and the lack of other effective protection for fashion original designs.  At the same time the limits that should be included to prevent abuse of the proposed protection need to be reviewed.  The Fashion Industry proposing this legislation did make several compromises in term of protection and he unregistered protection period.

C.   Vessel Design Protection Act Amendment.   An amendment to the Protection of Original Designs law, 17 U.S.C.'' 1301-1332 was proposed in the 109th Congress and continued in the 110th Congress, S. 1640 (110th, 1st Sess.).  A hearing was held by the House Judiciary Committee, Subcommittee on Courts, The Internet and Intellectual Property, February 14, 2008, on the bill.  All the witnesses spoke in support of the amendment.  In his testimony Professor Fryer identified the change as a clarification of the law and a way of simplifying registration.  The witness written and oral statements are on the Subcommittee web site at URL: http://www.wipo.int/ebookshop/. Professor Fryer's statement can be reviewed on this web site, by clicking on the following link: FRYER HEARING STATEMENT ON THE VESSEL HULL DESIGN PROTECTION ACT AMENDMENT.   There appears to be no opposition to this legislation.  The bill is supported by a boat manufacturer's trade association.

At this date the Vessel Hull Design Protection law amendment is being reviewed for possible enactment this Congressional term.
 

VII.  Recent WIPO Book on How to Teach IP Law Includes Industrial Design Law

Summary:  A new book on How to Teach Intellectual Property Law was developed by WIPO .  The book was written by experience IP teachers and practitioners, and each major area of IP law has a chapter with insights on how to prepare an IP coaurse on the topic and important insights on substantive law and teaching techniques.  The varied chapter formats and approaches taken make the book a useful source for all IP teachers and encouragement to read the entire book, no matter what IP subjects are a teacher's special interest.

The need for global discussion of how to teach intellectual property law was one of the reasons for that a group of law professors  formed ATRIP (Association for the Advancement of Teaching and Research in Intellectual Property in 1981, with the help of WIPO.  It was the inspiration of WIPO that  resulted in the  recent publication of a book titled: How to Teach Intellectual Property law, authored by several professors who are members of ATRIP  and others, that gave their extensive experience in teaching intellectual property law.  WIPO published a book review on this book that can be found on the WIPO web site at URL:  http://www.wipo.int/wipo_magazine/en/2008/02/article_0013.html .  A chapter in this book on How to Teach Industrial Design Law was authored by Professor Fryer.   This chapter was developed to help teachers understand the global view of industrial design protection law related to registration systems.   The chapter introduced the international agreements and  fundamentals shared by most design registration systems, in order to help a teacher structure a course using primarily Internet resources.

The book will be available from the WIPO E-Book Shop, at URL: http://www.wipo.int/ebookshop/, and it is published by Cambridge University Press, with information at URL:   http://www.cambridge.org/catalogue/catalogue.asp?isbn=9780521716468

This book has a unique synergism, with each author free to take their own approach, and the insights gained from reaching all the chapters, irrespective of a teacher's special interests in intellectual property law, allows the reader to gain a comprehensive view of the law and teaching.
 
 

End of Document (June 28, 2008)
 

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