FRYER* NEWSLETTER NO. 2 November 10, 1997

INDUSTRIAL DESIGN PROTECTION UPDATE

Prepared by William T. Fryer, III

TABLE OF CONTENTS

Final Design Patent Application Rule Changes Approved

Patent and Trademark Office Reengineering - Recent Changes Effect Design Patent Applications

Meeting of Experts on Hague Agreement Revision Held November 3-7, 1997

1996 Design Conference Selected Articles Publication

Vessel Hull Design Protection Act Legislation filed and Hearing Held

In Re Daniels PTO Decision Appeal to Federal Circuit

Internet IP Research and Communications

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Final Design Patent Application Rule Changes

This Newsletter issue links to a page on the web site that provides an analysis of the major patent rule changes concerning design patents, effective December 1, 1997.

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Industrial Design Treaty Revision Continues (Hague Agreement Concerning the International Deposit of Industrial Designs)

The 7th meeting of experts on revision of the Hague Agreement Concerning the International Deposit of Industrial Designs (Industrial Design Treaty) was held November 3-7, 1997, at WIPO. William Fryer and Doug Larson attended this meeting, representing the American Bar Association, Section of Intellectual Property Law and the American Intellectual Property Law Association, respectively.

This web site contains a page devoted to the Industrial Design Treaty that will be updated in a few weeks with a report on latest meeting of experts. In summary, the meeting concluded with the group recommending that the experts' work conclude and a diplomatic conference be held. Some preparation for the Diplomatic Conference will be needed to finish the text for provisions that have been agreed to in principle. The date for the Diplomatic Conference has yet to be set.

The ABA Special Committee 351 has a draft resolution that supports acceptance of the Draft Text, with a few issues to be resolved at a diplomatic conference.

A review of the revision work up to the Hague Agreement revision, 7th meeting of experts, was given in FRYER Newsletter No. 1 - See Hague Agreement.

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U.S. Patent and Trademark Office Reengineering - Recent Changes Effect Design Patent Applications

Reports indicate that the PTO Reengineering Project described in FRYER Newsletter No. 1 has improved some aspects of design patent application prosecution. The original plan was to have a complete processing system from mail receipt to preparing the application for issue. Budget and other factors appear to have caused the PTO to return the mail process part of the process to a centralized system. This change occurred at a time when the mail processing was already having problems providing prompt transmission of filing receipts, processing requests for certified application copies.

The mail processing program was the subject of considerable complaints at a Round table Meeting of attorneys held by the PTO this summer. The attorneys reported delays in receiving filing receipts and problems in obtaining certified copies of applications for foreign filing. The six months Convention date for design patent application foreign filing made the situation very critical.

The PTO Administration was informed of this concerned and requested to complete the mail room processing in time to routinely allow an attorney to foreign file a design patent application without special handling or loss of rights. If you are having problems with the PTO mail room, write the Commissioner of Patents and Trademarks. The processing should provide at least two three months for processing of foreign filing applications before the six months Convention date ends. This means that the filing receipt should be received at least within three months of the filing date. Check your applications to see if this goal is being reach and let the PTO know if you are satisfied.

A related concern is obtain certified copies of the application for foreign filing purposes. This document must be sent to a foreign patent office to establish the Convention date. The PTO has not been able to prepare these documents in some cases in time for foreign filing with the foreign application. Attorneys should report any problems in obtaining this document.

The basic point that a design patent application foreign filing must be in six months under the Paris Convention must be reemphasized to the PTO. The Office needs to set up a mail processing system that will regularly work for design patent owners. The utility patent application permits one year to file the Convention application. The present system may be geared more to meeting the utility patent application needs and not the much earlier design patent application maximum period.

A related observation is that the revised Industrial Design Treaty will provide a One Stop Shop for foreign filing, permitting the International Registration application to be filed in the PTO and guarantee prompt Security Review and transmittal of the application to WIPO for initial formal documents review and designation of the U.S. to obtain protection. The improved filing procedures is just one of the advantages of the revised treaty.

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Status Report 1996 Design Conference Selected Articles Publication

The American Intellectual Property Law Association Quarterly Journal will published selected articles from the 1996 Industrial Design Conference in the next issue (likely published in November 1997). Copies of this Journal will be distributed to attendees, and all AIPLA members will received this publication. If you want to receive a copy of this issue of the Journal, contact the AIPLA Office (telephone number (703) 415-0780, fax (703) 415-0786). FRYER Newsletter No. 1 reported on this conference.

More information about the conference can be found in Newsletter No. 1 [link to this newsletter].

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Vessel Hull Design Protection Act Legislation Filed and Hearing Held

On October 23, 1997, the House Judiciary, Subcommittee on Courts and Intellectual Property, held a hearing on the Vessel Hull Protection Act legislation that was just introduced. There is a strong interest in protection of this product, as evidenced by the U.S. Supreme Court decision in Bonito Boats. William T. Fryer, III, present oral and written testimony at the hearing. A copy of his testimony is on this web site.

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In re Daniels PTO Decision Appealed to Federal Circuit

A very important design patent decision, In re Daniels, 40 U.S.P.Q. 2d (BNA) 1394 (Board of Patent Appeals and Interferences 1996), has been appealed to the Federal Circuit. The facts surrounding this case may be well know, but the fundamental principle of design patent law involved in this case has not receive much notice.

An invention development company was able to file about 1700 design patent applications, and assert novelty, by adding ornamentation to each application. The Board focused on the issue of a continuation application right to claim subject matter in an earlier, copending application. The Daniels' continuation application claimed only the shape of a product, and not the combination of the ornamentation and the shape as shown in the earlier application. The ornamentation added by the invention company was not disclosed in the continuation application. The Board held that the continuation design application could not claim this subject matter, for several reasons.

The case raises fundamental issues of claim and disclosure law for design patent applications. The Amicus Curiae brief filed by William T. Fryer, III, is on this web site.

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Internet IP Research and Communications

The Internet has many web sites related to intellectual property law and practice. There are some web sites, like this one, devoted to special topics. The experience in creating this web site and using it is described in a paper by William T. Fryer, III, titled "Internet IP Research and Publication: A search for Quality and Global Communications", presented at the Annual Meeting of ATRIP (International Association for the Advancement of Teaching and Research in Intellectual Property, July 7-9, 1997 - Paris, France. The paper identifies web sites found to be of particular value in IP research. A copy of this paper is on this web site.

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Comments on topics mentioned in this newsletter are welcomed. All comments should be sent to the editor at the following e-mail address: fryer@fryer.com --.

* "FRYER" is a trademark for paper publications created printing out from the Internet or from a down loaded copy of the web file, and it is a service mark for electronic information services.

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