What’s happening
Negotiators from the WIPO’s 186 members, plus accredited observer bodies, are currently working on a draft international treaty meant to benefit designers seeking design protection by simplifying and harmonizing a number of filing rules that currently vary greatly by country.
The work in the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) seeks to establish a number of common rules and procedures for design applications in countries around the world. This process could lead ultimately to a Diplomatic Conference, where treaties are finalized.
Nine major improvements are under debate in the draft treaty, ranging from the modes of representation or illustration for a design in an application, to simplifying the creation and filing of legal documents.
Delegates also discuss issues related to the implementation of a future treaty, including technical assistance and capacity building commitments, such as training and help for establishing the necessary technical infrastructure for developing and least developed countries that will implement changes under a new treaty.
The goal of the draft treaty is to make it easier and cheaper for industrial-design holders to protect their work around the world in that it would codify various-established registration practices among eventual signatories.
Some background
An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color.
Industrial designs are applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches and jewelry from housewares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods.
Many of the world’s iconic products are also good examples of items whose “look” can be protected: Apple Inc.’s IPhone; Chairs by Charles and Ray Eames; Volkswagen Group’s Beetle, Industrial designs enhance a products attractiveness and appeal, adding to its commercial value and increasing its marketability.
Protecting an industrial design helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large by promoting fair competition and honest trade practices.
Further, protecting industrial designs helps economic development by encouraging creativity in a country’s industrial and manufacturing sectors while contributing to commercial expansion and increasing export of national products.
An industrial design is primarily of an aesthetic nature and does not protect any technical features of the article to which it is applied. To be protected under most national laws, an industrial design must be new and original. Novelty or originality is determined by comparing the application to what products or protected designs are already in existence.
The Hague System for the International Registration of Industrial Designs, administered by WIPO, provides a mechanism for registering a design in countries and intergovernmental organizations that are member of the Hague Agreement, currently numbering 60 contracting parties.
The system allows owners of an industrial design to obtain protection in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.
The Hague System simplifies the management of an industrial design registration, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO.
While WIPO provides a single filing system among 60 contracting parties, there are still many differences in national filing regulations among WIPO’s 186-nation membership, and the proposed new treaty aims to harmonize many of them. International filing regulations for patents and trademarks are already covered by similar treaties, overseen by WIPO.
Where we’re going
During the 2013 Assemblies of the Member States of WIPO (Fifty-Second Series of Meetings) the WIPO General Assembly decided to request the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications to finalize its work on the text of the basic proposal for a design law treaty. The extraordinary session of the General Assembly in May 2014 will take stock of progress made and decide on whether to convene a diplomatic conference in 2014 in Moscow. The Russian Federation has offered to host any diplomatic conference.
Here is a quick glance at some of the topics under discussion:
1. Choosing how to represent or illustrate a design. An applicant will be able to choose whether to illustrate or represent the design using drawings, photographs, other visual media (for example, computer-aided design) or a combination of media.
2. Reducing number of copies of each illustration required for filing. An applicant will not have to submit more than three copies of each illustration or representation when filing an application (or just a single copy in the case of e-filing).
3. Registering a set of related designs in a single application. It will be possible to register several related designs in a single application, rather than register each individual design in a separate application. There will be safeguards in place to ensure that the original filing date is protected in the event that one of the individual designs is not accepted.
4. Gaining a secure filing date from which your design is protected. It will be simpler to gain a secure filing date for the protection of your design. In order to gain a secure filing date, you will only need to provide details on the applicant, an illustration of the design and possibly a fee.
5. Registering a design six months after public disclosure. It will be possible to register a design up to six months after a new design has been publicly released.
Or as an alternative option:
6. Registering a design 12 months after public disclosure. It will be possible to register a design up to 12 months after a new design has been publicly released.
7. Obtaining secrecy for six months after filing an application. It will be possible to keep a design secret for at least six months after filing a new design.
8. Standardizing the information needed to submit (or make changes to) a design registration. The information needed to submit a new application will be standardized internationally.
9. Simplifying the procedures to present legally valid documents in another country. There will be a simplification to the requirements for creating and signing legal documents.
Last Updated: January 2014