Recent Changes to International Design Law
Intellectual Property Law Alert 04/11/18 Nicholas P. Schmidbauer, John R Linzer, Justin D. DeAngelis
The first quarter of 2018 brought with it a few important changes and proposed changes to international design patent practice in the United Kingdom (U.K.) and Mexico. In particular, those countries have adopted modifications to existing rules that will affect filing strategies for those seeking protection and infringement assertion strategies for those looking to enforce their rights.
Industrial Design Patent Changes in the United Kingdom
As a result of the withdrawal of the U.K. from the European Union, a Draft Withdrawal Agreement (the Draft) was published on February 28, 2018. Among the various topics addressed by the Draft are a number of changes to intellectual property law in the U.K. Importantly, the Draft proposes that the U.K. will remain a part of the European Union Intellectual Property Office (EUIPO) system until December 2020. After December 2020, pending EUIPO designs will have a nine month transition period to claim priority to newly filed U.K. design applications. As a result of this proposal, the Draft indicates that design filers will not need to file separate U.K. and E.U. design applications at this time or for several more years.
Further, the Draft indicates that granted U.K. design registrations will be created automatically from EUIPO design registrations that are granted before the end of the transition period, and that designs filed through the Hague convention that designate the E.U. will not be affected by the transition. The Draft also indicates that Unregistered Design protection will be available in the U.K., such protection being similar to unregistered Community designs in the European Union that are afforded protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union.
The U.K. further took the step of depositing its instrument of ratification of the Geneva Act of the Hague Agreement with the World Intellectual Property Organization (WIPO) on March 13, 2018. As a result, the Geneva Act will enter into force, with respect to the United Kingdom of Great Britain and Northern Ireland and the Isle of Man, on June 13, 2018. This makes the United Kingdom the 54th member of the 1999 Act and 68th member of the Hague Union. As a result, even though the U.K. will no longer be a part of the EUIPO system, design protection can still be sought in the U.K. through Hague design filings.
Amendments to Mexican Industrial Property Law for Patents and Designs
On March 13, 2018, amendments to the Industrial Property Law of Mexico were published in the Mexican Official Diary (the Amendments). The Amendments will enter force beginning April 27, 2018. Importantly, for those seeking the benefit of the Amendments, Mexican-filed Industrial designs that are currently being prosecuted can receive protection under the Amendments if a petition is filed with the Mexican Institute of Industrial Property (IMPI) between April 27, 2018 and June 11, 2018.
The most important amendment to consider relates to the term for patented designs. Currently, Mexican industrial designs are capped at a single term of 15 years. Under the Amendments, industrial designs will be granted an initial five year term, with the possibility of four additional five year renewal periods, resulting in a possible 25 year term.
Further, the Amendments provide that once a design application has been published in the Official Gazette, the official files for pending industrial design applications will be open for public inspection. Previously, the files were considered confidential until the resulting patent was published in the Official Gazette, so non-issued applications would remain under seal indefinitely.
The Amendments also provide that two indistinct terms used to define novelty, i.e., “independent creation” and “significant degree,” will be better defined in the statute. “Independent creation” has been defined to mean that no other identical industrial design has been made public before the filing date of the design application, or before the recognized priority date. “Significant degree” has been defined as the general impression produced by the industrial design to a person skilled in the art and that differs from the general impression produced by another industrial design, which has been made public before the filing date of the design application, or before the recognized priority date. These changes should provide better clarity for applicants inquiring into whether a design is patentable.
Of somewhat lesser importance are the changes in the Amendments that provide that the filed drawings of design applications must be sufficiently clear for the comprehension of the design and its publication. Further, the identity of the product for which the design will be used must be included with the application, but the previous requirement that required inclusion of the genre of the product has been removed. For parties wishing to submit third-party submissions after publication of an application, the term within which such submissions are possible has been reduced to two months from six months.
Navigating These Changes
The changes outlined above may affect both pending applications and future design filings. We are prepared to assist you in successfully negotiating these evolving landscapes and to discuss how these changes may affect your filing strategies.