Connect, Share & Grow - FICPI WEBINAR SERIES - 2020 STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
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FICPI WEBINAR SERIES Connect, Share & Grow 2020 STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
FICPI “FICPI is a global community, built on trusted relationships, which strengthens the practice of the independent IP attorney” www.ficpi.org STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
FICPI @social media LinkedIn www.linkedin.com/company/ficpi LinkedIn Members’ Group www.linkedin.com/groups/2214472/ www.ficpi.org STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
FICPI WEBINAR SERIES Partial Design Protection 25 November 2020 STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
QUESTIONS? Ask using the ‘Q&A’ function at the bottom of your screen STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
MODERATOR Gabriel Di Blasi FICPI – Chair, CET Group 2: Designs // Managing Partner, Di Blasi Parente STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
SPEAKERS Jürgen Buchhold FICPI – Reporter, CET 2: Designs Partner, Olbricht Patentanwälte Katsumori Iseki FICPI – Regional Co-Ordinator Japan, CET 8: Asian Issues Partner, CP Japan IP Attorneys Robert S. Katz FICPI USA President Elect Partner, Banner & Witcoff Stephen Perry FICPI Canada Vice President Partner, PCKIP (Perry Currier) STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
SPEAKER Robert S. Katz FICPI – FICPI-USA President Elect // Partner, Banner & Witcoff STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Connect, Share & Grow Partial Designs - FICPI Virtual Meeting November 25, 2020 Robert S. Katz (202) 824-3181 rkatz@bannerwitcoff.com 9
Why is Protection of portions important Portions Get Misappropriated! • Hypothetical Knockoff Creations • NIKE Air Max 1997 • Adidas Yeezy Boost 350 V2 11
U.S. Law – Portions Permitted • 35 USC §171 - Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor…. • Gorham Co. v. White, 81 US 511 (S.Ct 1871) o Handle portion for stemware • In re Zahn, 617 F.2d 261 (CCPA 1980) o Shank portion of a drill bit. o An ornamental design may be embodied in less than a complete article 12
Statutory Provision/Practice Rules – Demarcating Claimed from Disclaimed • 35 USC §112 - The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art …to make and use the same, • Most common technique o Solid lines for what is being claimed o Broken (dashed) lines for what is being disclaimed o Can generally omit disclaimed features • USPTO has formally and informally recognized other approaches • Make sure the written specification corresponds/aids 13
Broken line examples The broken lines depicting the remainder of the computing device show features that form no part of the claimed design. 14
Broken line examples The broken line showing of a part seam and the tip of the food probe forms no part of the claimed design. 15
Broken line examples Do not need to show all disclaimed subject matter in broken lines -- can normally omit them. …The broken lines depicting the remainder of the shoe show features that form no part of the claimed design. 16
Practice Rules - Boundaries • Examiners seem to want boundary line designations in the written specification The broken lines depicting the remainder of the connector adaptor show features that form no part of the claimed design. The broken lines immediately adjacent to the shaded area represent the bounds of the claimed design and forms no part thereof. NOTE SURFACE SHADING 17
Practice Rules - Boundaries • Examiners seem to want boundary line designations in the written specification The even-length broken lines form no part of the claimed design. The uneven-length broken lines immediately adjacent to the shaded area define the bounds of the claimed design and form no part thereof. 18
Photohybrid Examples The broken lines depicting the remainder of the play kitchen show features that form no part of the claimed design. 19
Photohybrid Examples The broken lines depicting the remainder of the faucet show features that form no part of the claimed design. 20
Photohybrid Examples The broken line immediately adjacent to and surrounding the photographic area defines the bounds of the claimed design and forms no part thereof. The broken lines depicting the remainder of the vest show features that form no part of the claimed design. 21
Photohybrid Examples The broken lines immediately adjacent to the photographic area define the bounds of the claimed design and form no part thereof. The broken lines depicting the remainder of the shoe show features that form no part of the claimed design. 22
Photoblurring-Greying Out Examples The over-the-ear clip of the ear- mountable bio-sensor device shown…grayed out in FIGS. 9-16 represent environmental subject matter that forms no part of the claimed design. 23
Photoblurring-Greying Out Examples The grey faded portions are for environmental purposes only and form no part of the claimed design. 24
Amendments – Avoiding New Matter • Can change scope of the claim post-filing or in a continuing application • But cannot add any new matter • In re Owens (Fed. Cir. 2013)– a disclaimed boundary line added anew was found to be prohibited new matter. 25
Portions YES – but how do I know? • Getting the best bang for the buck • What should the protection focus on? • How many designs should be protected? • Factors o KNOW: differences between design and utility patents o Is the product an expected single or a home run o Likelihood of being simulated o Expected price of creator’s product & how long it will product be sold o Closeness of the prior art o Other related products in the line? Similar DNA? o Maximize infringement and/or damages o Cutting edge claiming/disclaiming techniques o Dozens more………. • For next presentation…… 26
Questions? 27
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SPEAKER Katsumori Iseki FICPI – Regional Controller CET Group 8: Asian Issues // Partner, CP Japan IP Attorneys STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
PARTIAL DESIGN PROTECTION IN JAPAN Katsumori ISEKI November 25, 2020 STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Statistics of partial design application The number of partial design application The number of related design application The partial design applications /all applications(%) The related design applications / all applications(%) (Source: Statistics of JPO) STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Revised Examination Guideline has applied to design applications filed on or after 2019.5.1 The revised Examination Guideline mainly includes: • Relaxing the requirements for drawings Removing the column indicating ‘Partial design • application’ in the application paper for a partial design • ….. STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Relaxation of requirements for drawings the drawing without [back view] of picture frame [ Plain view] [ Perspective view] [Left side view] [Right side view] [ Front view] [ Bottom view] Before: Issuing the reasons for refusal Present: THE STRENGTHENING Issuing PRACTICEno reasons OF THE for IPrefusal INDEPENDENT ATTORNEY
Background of Revising the Examination Guideline • The number of the design applications receiving the reasons for refusal via Hague International design registrations was increasing due to the difference of requirements for drawings and descriptions in each jurisdiction • Most of the reasons for such design applications via Hague were by the main paragraph of Article 3 of the Design Act unlike those of normal design applications • One of the purpose of the main paragraph of Article 3 requires the specific disclosure of the design article • ….. STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Basics of depiction of drawings for a partial design [Article to the Design] Flange STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Basics of depiction of drawings for a partial design [Article to the design] Picture frame The back view is missing but it is presently acceptable. The design represented by those drawings is now considered as a ‘partial design’ even though only solid lines are used in these drawings. This means that this application claims all views of article except the back view, meaning this application requests a partial design protection. STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Recent examples of registered design under the revised Examination Guideline (JP Design Registration No.1671395) *Basic application was filed before EUIPO STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Recent examples of registered design under the revised Examination Guideline [Perspective view] [Side view] [Top view] (JP Design Registration No.1669396) *Basic application is Hague International registration STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Determination of similarity for a partial design [Basic aspects in determining similarity between two designs] (i) The article of the design (ii) The usage and function of the ’part’ requested for registration (iii) The form of the ‘part’ (iv) The position, size and scope of the ‘part’ Under the Revised Examination Guideline, the similarity between entire design application and partial design application is now examined. Examine Similarity Entire design Partial design STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
Revised Design Act 2019 -effective on 2020 April 1- [Main items for the Revised Design Act] (i) Protection for Graphic image itself (ii) Protection for Building and interior designs (iii)Enhancement of Related design system (iv) Introduction of partial design for a set of designs (v) Change to protection period for design rights-25 years from the application date (vi) ….. (Present related design system) [a set of buildings for a partial design] [a set of vehicle and display image] STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY (registered) (registered) (’Revision of the Design Act’ of JPO)
Variety of strategy by considering the Revised Design Act [Partial design] X [Related design] Reg.No.1286748 [Sanitary Mask] Principal design Reg.No.1286747 Reg.No.1286750 Reg.No.1286749 Related design Reg.No.1286491 [Partial design] X [Graphical image] [Partial design] X [Building and interior design] [Partial STRENGTHENING THE PRACTICEdesign] X [a set OF THE INDEPENDENT of designs] IP ATTORNEY …..
PARTIAL DESIGN PROTECTION IN JAPAN THANK YOU! STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
SPEAKER Jürgen Buchhold FICPI – Reporter, CET 2: Designs // Partner, Olbricht Patentanwälte STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
CET Group 2 – Industrial Design FICPI Webinar Partial Design Protection 25 November 2020 ACTING FOR THE IP PROFESSION WORLDWIDE 44 www.ficpi.org
CET Group 2 – Industrial Design Partial Design Protection in Europe How the EUIPO deals with Partial Designs Jürgen Buchhold ACTING FOR THE IP PROFESSION WORLDWIDE 45 www.ficpi.org
CET Group 2 – Industrial Design Definition of an Industrial Design according to COUNCIL REGULATION (EC) No 6/2002 (CDR) Art 3 a) CDR “Design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. CDR explicitly permits the registration of Partial Designs ACTING FOR THE IP PROFESSION WORLDWIDE 46 www.ficpi.org
CET Group 2 – Industrial Design Conditions with which applications must comply according to COUNCIL REGULATION (EC) No 6/2002 (CDR) Art 36 (1) CDR: An application shall contain: a representation of the design suitable for reproduction. ACTING FOR THE IP PROFESSION WORLDWIDE 47 www.ficpi.org
CET Group 2 – Industrial Design Representation of the Design according to COMMISSION REGULATION (EC) No 2245/2002 (CDIR) Art 4 (1) CDIR: The representation of the design shall consist in a graphic or photographic reproduction of the design, either in black and white or in colour. Art 4 (2) CDIR: A maximum of seven different views can be filed in order to represent the design. The views may be plan, in elevation, cross-sectional, in perspective or exploded. ACTING FOR THE IP PROFESSION WORLDWIDE 48 www.ficpi.org
CET Group 2 – Industrial Design Representation of the Design according to COUNCIL REGULATION (EC) No 6/2002 (CDR) Art 36 (2) CDR: The application shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied. ACTING FOR THE IP PROFESSION WORLDWIDE 49 www.ficpi.org
CET Group 2 – Industrial Design Representation of the Design according to COUNCIL REGULATION (EC) No 6/2002 (CDR) Art 36 (3) CDR: The application may contain a description explaining the representation or the specimen. ACTING FOR THE IP PROFESSION WORLDWIDE 50 www.ficpi.org
CET Group 2 – Industrial Design Representation of the Design according to COUNCIL REGULATION (EC) No 6/2002 (CDR) Art 36 (6) CDIR: The information contained in the […] description shall not affect the scope of protection of the design as such. A description is allowed, but has nothing to say, not even about a specific part of a design to be claimed or not to be claimed ACTING FOR THE IP PROFESSION WORLDWIDE 51 www.ficpi.org
CET Group 2 – Industrial Design How to claim a Partial Design at the EUIPO? There are no terms or rules within CDR and CDIR as how to claim a specific part of a design Neither the CDR nor the CDIR provide rules for the possibility of providing a statement to disclaim any exclusive right to one or more features disclosed in the representations of the design A description? Not really helpful due to the exclusion from the scope of protection ACTING FOR THE IP PROFESSION WORLDWIDE 52 www.ficpi.org
CET Group 2 – Industrial Design Who can help? The EUIPO’s current design practice is reflected in a series of Guidelines for Examination that are intended to help users and staff in charge of the various procedures ACTING FOR THE IP PROFESSION WORLDWIDE 53 www.ficpi.org
CET Group 2 – Industrial Design The Design Guidelines Result of the Common Communication for the CP6 Convergence Project on Graphic Representation of Designs Working Group composed of 23 participating IP Offices, 5 observers, 2 User Associations and the EUIPO Started in November 2015 The result was published as the Common Communication in April 2016 (see https://euipo.europa.eu/tunnel- web/secure/webdav/guest/document_library/contentPdfs/about_euipo/who_we_are/common_commun ication/common_communication_7/common_communication7_en.pdf) ACTING FOR THE IP PROFESSION WORLDWIDE 54 www.ficpi.org
CET Group 2 – Industrial Design Implementation The following Countires have implemented the Common Practice: BG, BX, CY, CZ, DE, DK, EE, ES, FR, GR, HU, HR, IE, IT, IS, LT, LV, NO, PL, PT, RO, SI, SK, (UK), TR, OHIM/WIPO, EUIPO (27 Offices) From the EU are missing: AT, FI, SE, MT LATEST NEWS Georgia (Sakpatenti) has implemented the Common Practice in March 2020 Sakpatenti is the first non-EU intellectual property office implementing the Common Practice ACTING FOR THE IP PROFESSION WORLDWIDE 55 www.ficpi.org
CET Group 2 – Industrial Design The Design Guidelines IMPORTANT: the Guidelines are not legal acts, but self-imposed rules of conduct adopted by an administrative decision EUIPO issues a revision of the Guidelines on a yearly basis Current Version for Designs: 1.2 Entry into force: 01/02/2020 ACTING FOR THE IP PROFESSION WORLDWIDE 56 www.ficpi.org
CET Group 2 – Industrial Design How to claim a Partial Design? Chapter 5.3 of the Design Guidelines: In accordance with the Common Practice (CP6), Visual Disclaimers indicate that protection is not being sought, and registration has not been granted, for certain features of the design shown in the representations RCD 000 229 752-0001 We need a Visual Disclaimer to define and claim a Partial Design ACTING FOR THE IP PROFESSION WORLDWIDE 57 www.ficpi.org
CET Group 2 – Industrial Design How to claim a Partial Design? A visual disclaimer indicates what is not intended to be protected Disclaimers must be apparent from the representation of the design itself RCD 002 322 644- 0001 ACTING FOR THE IP PROFESSION WORLDWIDE 58 www.ficpi.org
CET Group 2 – Industrial Design How to claim a Partial Design? The disclaimer must be clear and obvious The claimed and disclaimed features must be clearly differentiated When the design is represented by more than one view, the visual disclaimer must be shown consistently in all the views where it appears RCD 000 244 520- 0003 ACTING FOR THE IP PROFESSION WORLDWIDE 59 www.ficpi.org
CET Group 2 – Industrial Design How to claim a Partial Design? The Visual Disclaimer is using Broken lines for indicating elements for which no protection is required Colour shading and blurring for excluding a number of features from protection Boundaries for outlining features of the design for which you do want protection ACTING FOR THE IP PROFESSION WORLDWIDE 60 www.ficpi.org
CET Group 2 – Industrial Design How to claim a Partial Design? Chapter 5.3 further rules: Where a disclaimer is used, broken lines are recommended Only when broken lines cannot be used due to technical reasons (e.g. indicating stitching on clothing), other disclaimers can be used, such as colour shading, boundaries or blurring. This is only a recommendation ACTING FOR THE IP PROFESSION WORLDWIDE 61 www.ficpi.org
CET Group 2 – Industrial Design Examples Broken Lines RCD 000 030 606-0005 BX 38 212-0001 HU D99 00 409-0001 ACTING FOR THE IP PROFESSION WORLDWIDE 62 www.ficpi.org
CET Group 2 – Industrial Design Examples Colour Shading RCD 005 295 680-0009 ACTING FOR THE IP PROFESSION WORLDWIDE 63 www.ficpi.org
CET Group 2 – Industrial Design Examples Boundaries RCD 001 873 688-0003 BX 38 212-0001 ACTING FOR THE IP PROFESSION WORLDWIDE 64 www.ficpi.org
CET Group 2 – Industrial Design Any problems with Partial Designs? Not in EUROPE! Not really, just marginally. Be careful when claiming a Priority of a foreign design application or registration. We have only 7 views of a design to be protected. ACTING FOR THE IP PROFESSION WORLDWIDE 65 www.ficpi.org
CET Group 2 – Industrial Design THANK YOU! RCD 001 125 355 -0001 ACTING FOR THE IP PROFESSION WORLDWIDE 66 www.ficpi.org
SPEAKER Stephen Perry FICPI – CET Group 2: Designs // Partner, PCKIP STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
PARTIAL DESIGN PROTECTION IN CANADA Stephen Perry November 25, 2020
DEFINITION OF AN INDUSTRIAL DESIGN design or industrial design means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye. NOTHING IN THE DEFINITION PROHIBITS PARTIAL DESIGNS
REGULATIONS RELATING TO DESIGNS Rule 14 … a representation of the design must • (a) be sufficient to disclose the design fully, taking into account the name of the finished article and any statement under section 17 or 18; (see next slides) THE DESIGN TAKES INTO ACCOUNT THE NAME OF THE ARTICLE
REGULATIONS RELATING TO DESIGNS • Rule 17 (1) Subject to subsections (2) to (4), an application is deemed to relate to all of the features of shape, configuration, pattern and ornament shown in the representation of the design… • (2) If the application contains a statement clearly indicating that it relates only to some of the features… or only to some or all of those features of a part of the finished article, then the application relates only to those features. DESIGNS CAN BE “PARTIAL” IN THAT THEY 1) RELATE TO ONLY SOME FEATURES (SHAPE, CONFIGURATION, PATTERN, ORNAMENT) OR 2) RELATE TO FEATURES OF A PART OF THE ARTICLE
REGULATIONS RELATING TO DESIGNS • Rule 17 (3) An application is deemed not to relate to a feature that is shown in the representation of the design in dotted or broken lines, unless the application contains a statement to the contrary. • (4) An application is deemed not to relate to a feature that is shown in the representation of the design by means of blurring or colouring if it is evident that the purpose of the blurring or colouring is to indicate that the application does not relate to that feature THE PARTIAL DESIGN CAN BE REPRESENTED USING BROKEN LINES OR BLURRING/COLOURING
REGULATIONS RELATING TO DESIGNS • Rule 18 An application may contain a brief statement describing the representation or the features of the design, but the statement must not describe a utilitarian function or a method or principle of manufacture or construction THE PARTIAL DESIGN CAN BE DESCRIBED USING A STATEMENT
EXAMPLE OF A STATEMENT • Finished Article: Table • Statement: The design is limited to the features of shape and configuration applied to the Table. The legs do not form part of the design
EXAMPLE OF USING BROKEN LINES • Finished Article: Glasses • Statement: Fig. 1.1 is a front elevated view of the Glasses. IT IS UNNECESSARY TO INCLUDE A STATEMENT INDICATING THAT THE BROKEN LINES DO NOT FORM PART OF THE DESIGN AS THIS IS DEEMED BY RULE 17(3)
EXAMPLE OF USING COLOURING Fig. 1.1 Fig. 1.2 Fig. 1.3 • Finished Article: Car • Statement: Fig. 1.1 is a front view of the car; Fig. 1.2 is a left perspective view of the car; and, Fig. 1.3 is a right-side view of the car. IF IT IS NOT EVIDENT THAT THE PURPOSE OF THE COLOURING IS TO INDICATE THAT THE APPLICATION DOES NOT RELATE TO THESE FEATURES, A STATEMENT TO THIS EFFECT SHOULD BE INCLUDED IN THE APPLICATION.
EXAMPLE OF USING BLURRING Fig. 1.1 Fig. 1.2 Fig. 1.3 • Finished Article: Car • Statement: Fig. 1.1 is a front view of the car; Fig. 1.2 is a left perspective view of the car; and, Fig. 1.3 is a left-side view of the car. IF IT IS NOT EVIDENT THAT THE PURPOSE OF THE BLURRING IS TO INDICATE THAT THE APPLICATION DOES NOT RELATE TO THESE FEATURES, A STATEMENT TO THIS EFFECT SHOULD BE INCLUDED IN THE APPLICATION.
USING BOUNDARY LINES • The Design Office will accept the use of boundary lines to define a boundary between the design and non-design portions of the article where the use of a statement of limitation, broken or dotted lines, colouring or blurring alone do not clearly show the design as applied to the article. • An accompanying statement should be included that the boundary line is used to define design and non-design portions of an article. • There are four types of acceptable boundary lines: 1) dot-dash, 2) coloured, 3) dotted and 4) broken. OTHER TYPES OF BOUNDARY LINES ARE ACCEPTABLE AS LONG AS THEIR PURPOSE IS CLEARLY DEFINED
EXAMPLES OF USING BOUNDARY LINES DOT-DASH • Finished Article: Shoe sole • Statement: Fig. 1 is a bottom view of the shoe sole. The dot-dash boundary line does not form part of the design and is included to indicate that the design is limited to the features within its boundary. Fig. 1.
EXAMPLES OF USING BOUNDARY LINES COLOURED • Finished Article: Shoe sole • Statement: Fig. 1 is a bottom view of the shoe sole. The coloured red boundary line does not form part of the design and is included to indicate that the design is limited to the features within its boundary. Fig. 1.
EXAMPLES OF USING BOUNDARY LINES DOTTED • Finished Article: Shoe sole • Statement: Fig. 1 is a bottom view of the shoe sole. The dotted boundary line does not form part of the design and is included to indicate that the design is limited to the features within its boundary. Fig. 1.
EXAMPLES OF USING BOUNDARY LINES BROKEN • Finished Article: Shoe sole • Statement: Fig. 1 is a bottom view of the shoe sole. The broken boundary line does not form part of the design and is included to indicate that the design is limited to the features within its boundary. Fig. 1.
PARTIAL DESIGN PROTECTION IN CANADA THANK YOU!
FUTURE WEBINARS • 9 December 2020 // Standardisation of digital communication between users of IP • 6 January 2021 // Divisional applications: match your patent strategy with your product strategy, across jurisdictions • 20 January 2021 // Legal technology • 3 February 2021 // EPO Strategic Plan www.ficpi.org/events-and-training/events STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
FICPI @social media LinkedIn www.linkedin.com/company/ficpi LinkedIn Members’ Group www.linkedin.com/groups/2214472/ www.ficpi.org STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
FICPI WEBINAR SERIES Thank you for attending © FICPI 2020 STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
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