INDUSTRIAL DESIGN PROTECTION UPDATE
Prepared by William T. Fryer, III
Introduction. The update of this web site has been delayed due to a worthy cause. The year plus gap has been devoted to finishing a book on the Geneva Act (1999), of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act). It presents the drafting history and operation of the Geneva Act. The book was published in early 2005 by Kluwer Law International. The publication details are available by this link.
The Geneva Act became operational on April 1, 2004. This event was a major step in the development of a more global system for administration of design registration, as well as laying the foundation for more extensive international harmonization of procedure and substantive design laws. The Geneva Act accommodates the membership of design registration system with and without novelty examination before registration. The single application for filing in member countries, in French or English, administered by WIPO, with one currency for filing and other fees.
This newsletter reports on the status of the Geneva Act accession, and several other important developments related to industrial design protection. Two of the topics, the FICPI Rome Designs Symposium and the WIPO Venice International Designs Conference, provided very useful publications, and stimulated interest in the Geneva Act, of the Hague Agreement accession.
Several important cases have been added to the Design Patent Database, and briefly discussed.
An update on the U.S. Vessel Hull Design Protection Act includes a review
of the Report issued in November 2003, by the Copyright Office and the
Patent and Trademark Office, on the five years operation of that law.
GENEVA ACT UPDATE
There are 17 members of the Geneva Act. The success of this treaty will
depend on a large membership including major users of industrial design
registrations. The European Union has completed a survey of interest in
accession to the Geneva Act, and the results were favorable. In the U.
S., there is a need to undertake similar activity. A
more detailed report is linked to this page.
FICPI 6TH OPEN FORUM, NOVEMBER 14-17, 2001, DESIGNS SYMPOSIUM, ROME, ITALY
The FICPI Designs Symposium in 2001 was another of the major events that have created better understanding of industrial design related treaties and national laws. A set of facts on a product was evaluated by to see how design protection could be obtained and enforced. Several of these presentations were published in the University of Baltimore Intellectual Property Law Journal, volume 10, issue 2, and copies of this publication can be obtained. Details on the Symposium and the publication are found on the linked page.
WIPO INTERNATIONAL CONFERENCE ON DESIGNS, MAY 13-14, 2004, Venice, Rome
A major stimulation in Geneva Act interest was created by the WIPO Conference in Venice, Rome. It occurred the day after a very important event, the ceremony that gave Dr. Idris, Director General of WIPO, the "Venice Award for Intellectual Property". The Designs Conference included government representatives, designers and IP practitioners from around the world. Many of the speakers indicated that their country or inter-governmental organization had an interest in becoming a member of the Geneva Act.
The papers presented at Venice Conference are a valuable resource for industrial design law research. Some of the papers are an in-depth review of the how industrial plays a role in the speakers' countries and specific companies. WIPO has placed several of these Power Point papers on their web site and this newsletter provides the guidance for accessing these publications. A summary of the papers that are on the WIPO web site and the instructions for accessing them are in the linked document.
DESIGN PATENT DATABASE UPDATE AS OF FEBRUARY 16, 2005
A feature of this web site that was started with the last newsletter was to provide a database of U. S. design patent cases, primarily from U. S. Court of Appeals, Federal Circuit. This Court has primary jurisdiction on all design patent law cases from the federal district courts and the U. S. Patent and Trademark Office. This database has been updated with this newsletter issue. Four new cases with precedential impact are listed. An explanation of precedential and non-precedential cases has been added to the explanatory notes. One non-precedential case is listed, for special reasons. The topics that are addressed in these cases are identified, with information to assist in locating the decision text on the Internet.
A very significant case, Bernhardt LLC, decided by the Federal Circuit, dealt with when showing a product design to a group of customers may initiate the statutory bar under 35 U. S. C. section 102(b). It provides insights on how to handle that type of meeting. The non-precedential case is important as an indicator of what will likely to be an issue in the near future for design patent litigation. The Minka Lighting Inc. case raised some very significant issues on claim interpretation and related litigation procedural aspects. These issues need to be addressed, and the law clarified, to be sure that design patents are receiving appropriate scope of protection..
UPDATE ON U. S. VESSEL HULL DESIGN PROTECTION ACT
The U. S. government issued a report on November 3, 2003, after a review of the five years of the Vessel Hull Design Protection Act (VHDPA) operation. The law has an unregistered stage, similar to the European Community Design, and a registration stage that extends protection. The report concluded that it was too early to determine the effect of the VHDPA on the boating industry. The system use will continue. A review of the VHDPA current operation and some of the issues raised at the hearing and in the report are in the linked document.. These comments include suggestions on how to make the VHDPA more effective, and identification of other products that may need the same type of protection against piracy.
PROFESSOR FRYER'S CV HAS BEEN UPDATED TO FEBRUARY 16, 2005.
can be accessed using this link.
* 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 U. S. federally registered service mark for electronic services and IP conferences and programs.
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This page was last updated on March 9, 2005.