(New) Fryer Institute Newsletter No. 9, April 14, 2012.


1.  DESIGN PATENTS AND THE AMERICA INVENTS ACT (AIA).  The featured article by Professor Emeritus Fryer explores the common relationship of design patents and utility patents in the U. S. patent law.   This unique relationship is reviewed in the context of the recently enacted AIA.


2.  FASHION DESIGN PROTECTION.  The U. S. Fashion industry has continued discussing legislation that would protect high end fashions.  The latest bill is U. S. House of Representatives H. R. 2511 (112th Cong., 1st Sess.).   There was a hearing in the House Judiciary Committee on this bill (July 15, 2011, that has the very useful witness testimony (See House Judiciary Committee Hearings web page.  A compromise bill appears to have been drafted by interested parties on both sides.  The latest House bill has been approved in part by the American Intellectual Property Law Association Designs Committee and its Board.  Whether the bill is considered further this Congressional term, or a rushed is made for enactment at the end of this term, will depend on the political situation in Congress.  The basic work to prepare the bill for enactment has been accomplished, apparently.

A new approach was taken in the last two versions of the fashion design bills when there was a switch to use only unregistered design protection.  There is no registration requirement, and protection is limited to 3 years from when the design was introduced into the market as a product.

The fashion design legislation in all of its forms is an addition to existing law that protects original designs, 17 U. S. C. §§ 1301 - 1332,  that also protects vessel hull designs.   This legislation was enacted to allow industries with special need to prevent counterfeiting and signficant loss of business due to product copying.   The statute allows special provisions to apply to a industry product to retain a competitive market.

3.  HAGUE AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS (HAGUE AGREEMENT DESIGN TREATY).  The Hague Agreement Geneva Act Information Center on this web site has some of the historical sources on this topic.  There are several new sources and information that will be place on the Center web site in the near future.  Recently Newsletters have been used to update the status of the Hague Agreement Design Treaty.

The treaty membership has grown significantly, from 23 members in June 2007 to the current 45 members in about 5 years, about an increase of about 100%.   Major design user countries have joined, including the EU.

As mentioned earlier, the U.S. has taken some significant steps to implement the law, by completing the Senate ratification process on December 7, 2007.  The next step is to implement the treaty, by enacting a few amendments of non-controversial nature to the patent law and prepared the necessary regulations amendments.   As of now, no legislation to make the necessary statutory amendments has been filed.  Regulation changes have been outlined, but public involvement in the regulation preparation process, a required step,  has not begun.

The PTO  has recently followed up with several positive steps to gain a stronger design organization within the Patent and Trademark Office (PTO) to handle the administration and policy issues that uis necessary for  a greater U. S. global involvement in design protection.  Pressure on the PTO from industry to speed up treaty implementation has increased.  Some U. S. Companies are not waiting for the U. S. to join the Hague Agreement,d using their overseas offices to participate in the international global filing system.   In the U. S., design inventors are not treated equally, compared with utility patent inventors and trademark owners, as the latter group have the Patent Cooperation Treaty and Madrid Agreement, respectively, to obtain simplified and relatively low cost design protection..

The PTO Strategic Plan for 2010 to 2015 now has a task to develop an action plan (implementation for the Hague Agreement Design Treaty.   This project needs to be kept in full view of the PTO management, as other major challenges continue may occupy its attention.    Outside support, with contacts with the PTO management and Congress are essential to help move the PTO into the global community of design protection which most countries are full involved with a very active administrative team to handle the economic needs for effective design protection.

The PTO  strengthened the management in Design Examining Group 2900 a few years ago.  Now the Design Group Director can focus on only on design administration and policy and not have to manage also a utility patent group.  The PTO history of Design Group 2900 management  management was assign that Group Director at the same time the management of a utility patent group, allowing a limited amount of time to become involved in desugb policy and administrative matters.   A new staff attorney has been hired who is experience in U. S.  design protection.   The PTO also has taken steps to make design patents and international design protection more visible in the U. S. and abroad.  This outreach has occurred through the PTO Global academy,  and it will help encourage other countries to utilize the U. S.  design patent.

4.  CAR PARTS DESIGN PROTECTION.   This topic continues to be the subject of activity in the U. S. Congress.  The right to repair products without infringment by the owner who purchased the product from the product orginator is high on the list of consumer trade associations and insurance companies.

The latest news on legislation is that H. R. 3889 (112 Cong., 2d Sess.) has been filed using a new approach.  The current bill ask for only a reduce design patent term of 30 months from the first marketing of a vehicle.  The bill does not try to reach out to cover all types of repair products. There has been no hearing on this bill.


5.  U. S. PTO DESIGN PATENT DAY.  The lastest of five U. S. PTO Design Patent Days was helped at the PTO on April 10, 2012, attended by over 300 persons.  It was sponsored by the ABA, AIPLA, IPO and IDSA. The last named organization is the Industrial Design Society of America, a an organization of industrial designs that is part of an international assembly of national Designs contributed a great deal to the PTO Design Patent Day program.  An industtrial designer and patent attorney manager described the recent steps to utilize industrial design development at Hewlett-Packard.    Speakers at the program discuss the U. S. And foreign practices in preparing design patent drawings.  More details on the latest conference may be published and news of this publication will be announced on this web site.

6.  OTHER ACTIVITIES RELATED TO THE FRYER INSTITUTE.  The Institute appreciated comments and suggestions on how its web site can be made more useful.   several persons have commented on the usefulness of this web site, as teachers  in their class presentations and research.  The Institute will continue to keep the significant historical materials on this web site to the extent feasible.

The Insitute is working on ways to make its  research materials more accessible.  An index of materials is being considered.  For now, the best way is to look for information on a topic is to look for a Newsletter that is near the date when your topic may have been active.  Each  Newsletter begins with a Table of Contents.

The main way to communicate with the FRYER INSTITUTE is to use its general E-mail address:  fryer@fryer.com.

This page was last updated on April 15, 2012