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The USPTO Federal Register is requesting comments from interested parties on whether the U.S. should join as a party to the WIPO Riyadh Design Law Treaty and any impacts from doing so. The deadline for submitting comments is June 11.
Design patents are a category of intellectual property to protect non-functional aspects, such as the appearance and ornamental features of products. The international registration and protection of industrial designs are currently governed by the Hague Agreement, first adopted in 1925 and last revised in 1999. Owners can apply to register design patents in the USPTO, with similar mechanisms and forms as with utility patents and trademarks.
The Riyadh Design Law Treaty consists of 34 articles and 18 regulations, and is aimed at creating a streamlined and consistent international framework for registering and protecting design patents. Notable aspects of the Treaty include:
- Article 4: Expressly enumerates the filing requirements for an industrial design application (applicant details, representation drawing of the design, indicating the products in which the design is to be used, priority date)
- These specific formalities are similar to the required elements of a design patent application in the current USPTO form.
- This would create consistency between filing instructions for USPTO registrations and international registrations
- Article 6: Explains that an application’s filing date is set when the application sufficiently complies with the requirements.
- This would create uniform priority dates across international registrations
- Article 7: There is a 12-month grace period without prejudice allowed for disclosure of an industrial design by the creator without loss of registering the design.
- This aligns with current U.S. design patent practice to ensure that novelty and originally of a design is not lost and a priority date is maintained
- Articles 14, 15, 16: Specifies certain relief measures if an applicant inadvertently misses a deadline and can restore its rights, apply for an extension of time, and correct a priority claim through requests to the Office.
- The USPTO has forms allowing for extensions of time for certain deadlines and petition requests for extending other deadlines.
- Article 31: State or government organizations may reserve the right to declare it shall not be bound by certain articles in the Treaty if its applicable law does not comply with the specified articles of the Treaty provisions (e.g., an applicant who is not domiciled in the subject territory and appoints a local representative).
- This provision allows some flexibility of member states to decide whether or not certain aspects of the Treaty are inconsistent with local practice.
- Regulation Rule 3: The representation drawing of the design may be in color or black and white, include visual dotted/broken lines, shading, or shown in several views.
- This aligns with the USPTO’s allowance of design patent graphic drawings in color and using various symbols to represent textures and conventional elements.
The full text of the Treaty can be found here: https://www.wipo.int/edocs/mdocs/sct/en/dlt_dc/dlt_dc_26.pdf.
Currently under the Hague System for filing an international design registration, individual contracting parties can refuse designs if they do not meet the individual territory’s domestic requirements, but the Treaty would allow for more uniformity in these requirements and how they are enforced.
The U.S. joining a global design law treaty has the potential to create more predictability for international applications and procedures, create efficiency and consistency across local and foreign offices, modernize the prosecution and enforcement of design patents, and allow the U.S. to maintain its design patent protection law to be compatible with other countries across the world.
The Treaty will enter into force three months after it is ratified or acceded to by 15 eligible member states and then will apply as the governing law to the joined Member States. Twenty-eight WIPO Member States have signed the Treaty so far (out of 194 current WIPO Member States), and Albania recently became the first country to ratify and implement the Treaty.
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