FRYER* NEWSLETTER NO. 1 MARCH 24,1997

INDUSTRIAL DESIGN PROTECTION UPDATE

PREPARED BY WILLIAM T. FRYER, III

TABLE OF CONTENTS

INTRODUCTION TO THIS PUBLICATION

DESIGN PATENT APPLICATION RULE CHANGES EXPECTED SOON

HAGUE AGREEMENT REVISION CONTINUES - WITH SUCCESS

U.S. PATENT AND TRADEMARK OFFICE REENGINEERING - DESIGN PATENT APPLICATION PROCESS IS AT THE LEADING EDGE

1996 DESIGN CONFERENCE WELL ATTENDED

U.S.DESIGN PATENT TEXT AND DOCUMENT IMAGES ON INTERNET

INTRODUCTION TO THIS PUBLICATION

MANY EVENT ARE OCCURRING AROUND THE WORLD AFFECTING THE AVAILABILITY AND QUALITY OF INDUSTRIAL DESIGN PROTECTION.

WHILE THERE ARE MANY PUBLICATIONS ON INTELLECTUAL PROPERTY DEVELOPMENTS, THIS NEWSLETTER AND THE RELATED WEB SITE MAY BE UNIQUE. IT IS DEVOTED AT THIS TIME PRIMARILY TO INDUSTRIAL DESIGN PROTECTION, BOTH NATIONAL AND INTERNATIONAL TOPICS. THIS NEWSLETTER'S PURPOSE IS TO ASSIST PERSONS IN RESEARCHING CURRENT DEVELOPMENTS IN INDUSTRIAL DESIGN LAW AND PRACTICE. THE COOPERATION AND SUPPORT OF OTHER RESEARCHERS AND PRACTITIONERS, SHARING INFORMATION AND COMMENTING, WILL BE NEEDED TO THE WEB SITE TO BE SUCCESSFUL.

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AS A RESULT OF WORKING ON BAR ASSOCIATION COMMITTEES AND OTHER PROJECTS CONCERNING INDUSTRIAL DESIGNS, THERE IS A CONSTANT FLOW OF NEW INFORMATION COMING TO THE NEWSLETTER EDITOR. OTHER RESEARCHERS HAVE THE SAME OPPORTUNITIES. THIS WEB SITE OFFERS A WAY TO SHARE INFORMATION.

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DESIGN PATENT APPLICATION RULE CHANGES EXPECTED SOON

THIS TOPIC IS AN ALERT TO U.S. PATENT AND TRADEMARK OFFICE (PTO) FINAL RULE CHANGES THAT WILL OCCUR VERY SOON (PROBABLY EFFECTIVE IN EARLY APRIL).

A TREMENDOUS NUMBER OF CHANGES TO PTO RULES WERE PUBLISHED FOR COMMENT RECENTLY [SEE 52 PATENT, TRADEMARK AND COPYRIGHT JOURNAL (BNA) NO. 1295, 523 -592, SEPT. 26, 1996; 60 FEDERAL REGISTER 29820, SEPT. 10, 1996]. SEVERAL PROPOSALS WILL AFFECT ALL PATENT PRACTICE, INCLUDING DESIGN PATENT PROCEDURES, AND OTHER CHANGES WILL BE SPECIFIC TO DESIGN PATENT PRACTICE.

PU LI C COMMENTS ON THE PROPOSED CHANGES HAVE BEEN EVALUATED BY THE PTO. THE PTO HAS INDICATED, PRIVATELY, THAT SOME CHANGES IN THE PROPOSED RULES RELATED TO DESIGN PATENT PRACTICE WILL BE MADE, AS A RESULT OF COMMENTS RECEIVED.. THE FINAL RULES ARE EXPECT TO BE PUBLISHED AND EFFECTIVE IN EARLY APRIL 1997. AN UPDATE WILL BE PROVIDED IN THIS NEWSLETTER.

AS A PRELIMINARY LOOK AT THE PROPOSED RULES, THE MAIN CHANGES INCLUDE:

1. PATENT APPLICATIONS, INCLUDING DESIGN PATENT APPLICATIONS, CAN OBTAIN A FILING DATE WITHOUT NAMING THE INVENTOR(S). THIS INFORMATION CAN BE SUPPLIED WITHIN A SET TIME PERIOD AFTER FILING. THE DISCUSSIONS ON REVISION OF THE HAGUE AGREEMENT ADDRESSED THIS POINT, [INSERT LINK TO HA PAGE].. THE CHANGE WILL FACILITATE HARMONIZATION OF U.S. DESIGN PATENT APPLICATION PROCEDURES. THE REQUIREMENT THAT THE INVENTOR(S) BE NAMED BEFORE THE FILING DATE IS AWARDED IS NOT THE PRACTICE IN MOST COUNTRIES. THERE IS NO FUNDAMENTAL REASON FOR RETAINING THIS REQUIREMENT. IT IS EXPECTED THIS RULE CHANGE WILL BE APPROVED.

2. COLOR DRAWINGS AND PHOTOS WILL BE PERMITTED AS REPRODUCTIONS FOR DESIGN PATENT APPLICATIONS. THERE ARE SPECIAL PROCEDURES TO FOLLOW AND INFRINGEMENT LIMITATIONS THAT HAVE TO BE CONSIDERED BEFORE USING COLORED DRAWINGS AND PHOTOS. THIS CHANGE IS ANOTHER RESULT OF THE HAGUE AGREEMENT REVISION DISCUSSIONS AND THE EFFORT TO HARMONIZE PROCEDURES .[LINK TO HA REV. PAGE]. IT IS EXPECTED THAT THIS CHANGE WILL BE ADOPTED.

3. THE STRICT RULES FOR SHADING ON DESIGN PATENT APPLICATION DRAWINGS WILL BE RELAXED, IN FAVOR OF A CASE-BY-CASE REVIEW. THIS CHANGE MEANS THAT FOR MANY DESIGN APPLICATION DRAWINGS, A COMPUTER AIDED DESIGN (CAD) PREPARED FORMAL DRAWING CAN BE USED. THE CAD SHADING (GRAY VARIATIONS) MAY BE PERFECTLY SUITABLE FOR SOME DESIGNS TO REVEAL THE DESIGN FEATURES. THIS CHANGE WAS THE RESULT OF SUGGESTIONS FROM PRACTITIONERS. THE PROPOSED CHANGE WAS DISCUSSED EXTENSIVELY AT MEETINGS OF THE AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION (AIPLA) INDUSTRIAL DESIGNS COMMITTEE IN 1995 AND 1996 (SEE COMMITTEE REPORTS IN AIPLA BULLETINS). IT IS EXPECTED THAT THIS PROPOSAL WILL BE ADOPTED.

HAGUE AGREEMENT REVISION CONTINUES - WITH SUCCESS

THE 6TH MEETING OF EXPERTS ON THE REVISION OF THE HAGUE AGREEMENT FOR THE INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS WAS HELD ON NOVEMBER 4-7, 1996. THE EDITOR OF THIS NEWSLETTER ATTENDED THE MEETING, REPRESENTING THE AMERICAN BAR ASSOCIATION, SECTION ON INTELLECTUAL PROPERTY LAW (ABA). A FULL REPORT ON THIS MEETING IS PROVIDED ON THE HAGUE AGREEMENT REVISION PAGE . IN SUMMARY, THE MEETING RESOLVED MOST OF THE MAJOR ISSUES, AND THE NEXT STEP IS TO COMPLETE THE COMPANION RULES. A MEETING OF CONSULTANTS (SMALL GROUP) WAS HELD IN FEBRUARY 1997 AT WIPO TO WORK ON THE RULES.

U.S. PATENT AND TRADEMARK OFFICE REENGINEERING - DESIGN APPLICATION PROCESS IS AT THE LEADING EDGE

THE U.S. PATENT AND TRADEMARK OFFICE (PTO) REENGINEERING PROJECT IS A MAJOR DEVELOPMENT, AIMED AT IMPROVING EFFICIENT AND REDUCING COSTS. THE PTO DESIGN GROUP HAS BEEN THE FIRST TO INITIATE SOME OF THE CHANGES. THE REENGINEERING WILL HELP REDUCE DESIGN APPLICATION PENDENCY. A SUMMARY OF THE STEPS TAKEN IN THE DESIGN GROUP IS GIVEN IN THE WEB SITE REPORT ON THE HAGUE AGREEMENT REVISION, UNDER THE HEADING "PTO ACTIONS TO PREPARE FOR ADHERENCE TO A REVISED TREATY", SINCE THE TREATY WORK HAS STIMULATED A LOT OF THE EMPHASIS ON REDUCING DESIGN PATENT APPLICATION PENDENCY.

1996 DESIGN CONFERENCE WELL ATTENDED.

THE NATIONAL CONFERENCE ON INDUSTRIAL DESIGN PROTECTION WAS HELD ON NOVEMBER 23, 1996, SPONSORED BY THE AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION (AIPLA), THE UNIVERSITY OF BALTIMORE SCHOOL OF LAW, AND THE INDUSTRIAL DESIGNERS SOCIETY OF AMERICA, IN WASHINGTON, D.C. OVER 2OO PERSONS ATTENDED THE ONE DAY CONFERENCE. THE U.S. PATENT AND TRADEMARK OFFICE (PTO) WAS A MAJOR PARTICIPANT. THE PTO SPEAKERS WERE DESIGN GROUP DIRECTOR JOHN KITTLE, DEPUTY COMMISSIONER OF PATENTS AND TRADEMARKS LAWRENCE GOFFNEY, AND SUPERVISORY PRIMARY EXAMINERS LOUIS ZARFAS AND HUGO WORD.

THE CONFERENCE WAS ORGANIZED BY WILLIAM T. FRYER, III, CHAIR OF THE AIPLA INDUSTRIAL DESIGNS COMMITTEE. IT IS PLANNED THAT A CONFERENCE FOCUSED ON INDUSTRIAL DESIGN PROTECTION WILL BE ORGANIZED BY THIS COMMITTEE EVERY TWO YEARS.

TOPICS PRESENTED WERE:

BENELUX DESIGN LAW IN PRACTICE - MONIQUE NILLESSEN,

U.K. - EXPERIENCE AFTER 1988 REVISIONS, INCLUDING DESIGN RIGHT - MORAG MACDONALD,

THE FUTURE OF DESIGN PROTECTION IN THE EUROPEAN UNION - GRAEME DINWOODIE,

REVISION OF THE HAGUE AGREEMENT ON INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS - FRANCOIS CURCHOD,

SITUATION ON JAPANESE DESIGN PROTECTION AND PROJECTS FOR DEVELOPMENT - KEITA SATO,

THE LAW OF DESIGN: MEXICAN LEGAL SYSTEM AND TRIPS - HORACIO RANGEL-ORTIZ,

DESIGN GROUP 2900 REENGINEERING PROJECT AND OTHER DEVELOPMENTS - JOHN KITTLE,

PROTECTION OF ARTICLE OF MANUFACTURE WITH COLOR - LOUIS ZARFAS,

THE NEW GUIDELINES ON PROTECTION OF COMPUTER-GENERATED ICONS AND TYPEFACE - HUGO WORD,

DESIGNER'S VIEW ON WHAT SHOULD BE PROTECTED - COOPER C. WOODRING,

21ST CENTURY U.S. DESIGN PATENT SYSTEM - WILLIAM T. FRYER, III,

COMMENTS ON FRYER PROPOSAL AND OTHER ALTERNATIVES - WILLIAM THOMPSON,

TRADE DRESS PROTECTION FOR PRODUCT CONFIGURATION: IS THERE A CONFLICT WITH PATENT POLICY - JAY DRATLER, AND

THE COPYRIGHT APPROACH AND UTILITY MODELS - THE FRINGE SOLUTIONS TO A REAL THREAT OF MARKET FAILURE - JEROME REICHMAN.

THE PROGRAM TAPES FOR MOST SPEAKERS ARE AVAILABLE FROM THE AIPLA: 2001 JEFFERSON DAVIS HIGHWAY , SUITE 203, ARLINGTON, VIRGINIA 22202; TELEPHONE (703) 415-0780; FAX (703) 415-0786.

SELECTED PAPERS FROM THE CONFERENCE WILL BE PUBLISHED BY THE AIPLA QUARTERLY JOURNAL IN ABOUT FIVE MONTHS. A COPY OF THIS PUBLICATION CAN BE OBTAINED FROM THE AIPLA (CONTACT INFORMATION ABOVE).

U.S. DESIGN PATENT TEXT AND DOCUMENT IMAGES ON INTERNET

FINALLY, THERE IS A PLACE TO GO ON THE INTERNET TO REVIEW AND COPY A U.S. DESIGN PATENT. THE WEB SITE IS THE IBM PATENT SERVER. YOU HAVE A CHOICE OF WHETHER TO REVIEW TEXT ONLY OR TO REVIEW AN IMAGE OF THE PATENT DOCUMENT.

IBM DEVELOPED THIS DATABASE FOR ITS WORLDWIDE OPERATIONS. IT IS MADE AVAILABLE WITHOUT CHARGE. A BRIEF EXPLANATION OF THE IBM PATENT SERVER USE IN PROVIDED ON THIS WEB SITE..

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