FRYER* Institute Newsletter No. 5, April 11, 2002

INDUSTRIAL DESIGN PROTECTION UPDATE

Prepared by William T. Fryer, III
 

Introduction.   This newsletter reports on several major developments related to industrial design protection, including the status of U. S. ratification of the Geneva Act (new design treaty),  the EU commencement of the unregistered protection part of their Community Design Regulation system.  In addition there is a global review of trademark-product configuration protection, and a research report on how to locate statistics on design patents and registration in the U. S. and other countries.

==============================================================================================================

Table of Contents

I.  Status of U. S. and Other Governments Ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act) -- Still in the Preliminary Stage.

II.  European Union (EU) Community Design Regulation The Regulation Has Become Operational.

III.  New Developments on Global Product Configuration Protection -- Major U. S. Court Decisions and Intense U.S. Discussions.

IV.  Report on How to Obtain Statistics on U. S. and Foreign Design Patents and Registrations Very Useful Economic Information Available from this Data
 

==============================================================================================================

I.  Status of U. S. and Other Governments Ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act) -- Still in the Preliminary Stage.

Draft legislation has been prepared by the U. S. Patent and Trademark Office (PTO) for ratification of the Geneva Act.  This draft was reviewed by representatives of the American Intellectual Property Law Association and American Bar Association, Section of Intellectual Property Law in December 2001 and comments were submitted.

The PTO Design Patent Group is working on the procedures for  integrating the Geneva Act into the Group's operation.  It is expected there will be new PTO Rules proposed for implementing the Geneva Act.

Other governments are working on acceptance of the Geneva Act and a few governments have approved it.  A report on that status will be provided in the next newsletter edition.  Current information on the ratification by governments is available from the World Intellectual Property Law Organization (WIPO), through their offices in New York City or Washington, D.C.

A presentation on the Geneva Act, its history, advantages and operation is available on this web page, in the form of a Microsoft Power Point file.
 

==============================================================================================================

II.  European Union (EU) Community Design Regulation The Regulation Has Become Operation.

The EU announced the approval of the Community Design Regulation, bring to a successful conclusion several years of discussion (click here for the EU annoucement).  This Regulation will set up a dual industrial design protection system, based on unregistered protection against copying for a limited time after a product is placed on the market, and an additional protection term if there is registration at the central office ( OHIM) within a prescribed time.  More information on the registration procedures will be available in the near future at the EU Registration Office web site (click here to go to OHIM site and give address).

While OHIM is not ready to receive registrations, the unregistered part of the protection is now operational.  There is protection in the EU against copying of industrial designs covered under the Regulation.

Work remains to be completed in regard to the protection of product parts, particularly replacement parts for automobiles.  This issue will be revisited in the near future, and in the interim each EU country's law will remain as it is for protection of these products.  Background on this issue and other aspects of the Regulation can be found on this web page.
 

==============================================================================================================

III.  New Developments on Global Product Configuration Protection -- Major U. S. Court Decisions and Intense U.S. Discussions.

The American Bar Association, Section of Intellectual Property Law (ABA-IP Section) Conference on April 11 and 12, 2002, in Washington, D. C, will have a session on trade dress, including product configuration protection, covering both U.S. and international developments.  The papers presented at this meeting will be available on CD from the ABA-IP Section Office (Click here for link to ABA-IP Section web site).

In addition, an article on this subject by Professor Fryer, published in the John Marshal Law Review in 2001, is available on this web site (click here for article).  This article analyzes the recent U. S. Supreme Court cases that have caused the renewed interest in product configuration protection.  There are several recent cases, after these U. S. Supreme Court cases, that suggest Courts are still trying to resolve how to approach product configuration protection.  In addition, there is significant opinion in IP professional organizations that legislative clarification is needed, to return U. S. law to a proper application of trademark principles to product configurations..

On the global level, Professor Fryer has suggested in his John Marshal Law Review article, that there is a need to revise the U. S. development U. S. approach to trademark product configuration protection, to harmonize it with what appears to be the EU approach.  He concluded that the proper trademark fundamentals and  balance have been applied by the EU courts.
 

==============================================================================================================

IV.  Report on How to Obtain Statistics on U. S. and Foreign Design Patents and Registrations Very Useful Economic Information Available from this Data

A report has been prepared by William T. Fryer III on how to obtain statistics on U. S. and foreign design patent and registration (click here for Report).  This information is available from the PTO and WIPO.  These statistics can be used to analyze several  interesting economic developments, including a comparison of national and foreign filing in a country, to relative internal economic activity, and the extent of filing from one country to another country, indicating international trade.
 

=============================================================================================================
 

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

HOME

* FRYER is a trademark for paper publications created printing out from the Internet or from a downloaded copy of the web file, and it is a service mark for electronic services and IP conferences and programs.

©   COPYRIGHT 2002, W. T. Fryer, III, All rights Reserved.  See CONDITIONS on use of web site for exceptions.

This page was last updated on April 20, 2002.

End of Document