FICPI’s attendance at the recent ID5 Annual Meeting made it clear that the five leading design Offices, the ID5 Partners, continue to make great efforts to harmonise global design practices across their countries and regions and consider better and more dynamic design laws and practices based on emerging new technologies and input from users. You can find a summary of their efforts and developments in this report.
On December 12-13, the 5th Annual Meeting of the ID5 was held in Tokyo, Japan.
The ID5 (Industrial Design 5) is a gathering of the world’s five leading design registration offices (Korea, Japan, China, the European Union and the United States: KIPO, JPO, CNIPA, EUIPO and USPTO), which collectively account for more than 80% of the world’s registered design applications.
As in previous years, the ID5 Partners gathered to continue their discussions, mainly focusing on the harmonisation of global design practices. The second day of the meeting consisted of a user session, in which FICPI and other user groups from around the world took part.
2019 ID5 joint statement
The ID5 Partners issued a “2019 ID5 Joint Statement” comprising a report of the first day’s discussions, (December 12, 2019), including confirmation of four key aspects for future work:
- Strive to establish common design practices based on knowledge acquired through comparative studies
- Receive input from users for the purpose of improving the usability of procedures for protecting industrial designs
- Share relevant information and experiences to enhance further the work and efficiency of design offices
- Foster cooperation and synergies with WIPO to facilitate services and tools for users.
Outcomes of 2019 Cooperation Projects
Priority document exchange by ID5 Offices
KIPO and CNIPO started the electronic exchange of design priority documents in July 2018. The USPTO began this on November 1, 2018. The JPO has a solid plan to begin in January, 2020. Meanwhile, EUIPO will start building its system in 2020.
Analysis of underlying economic factors and IP Office actions and how they impact global design filings
This topic has been studied by EUIPO since 2015. A report on main design drivers and events at each Office will be made public on the ID5 website in early 2020.
The result of a study led by EUIPO on the differences in “product indication” between the Offices will be available on the ID5 website in early 2020.
Admissibility of internet information as legitimate disclosure for novelty examination
A comparative study of legal grounds, practical circumstances and judicial and appeals decisions has been completed by the JPO as a first phase. The results of the study will be made public on the ID5’s website in the first quarter of 2020. An assessment of the results will follow as a second phase.
3D printing and industrial design protection
KIPO has studied how to protect design rights relating to 3D printing processes at four different stages, which may give rise to disputes involving designs:
Step 1 : Create and store a 3D printable file
Step 2: Transmit, sell and transfer a 3D printable file
Step 3: Manufacture a duplicate by using a 3D printable file (for private use)
Step 4: Sell and trade a duplicate created by using a 3D printable file.
The report should be published around February 2020.
Recommended design practices
The aim of the project “ID5 Recommended Design Practices” is to produce an agreed set of recommended, but non-binding provisions, which are endorsed by the ID5 Partners. The identification of common recommended practices should encourage other design offices to adopt these principles for compatibility. As more Offices consider implementing these principles into their design systems, design creators and applicants will be able to pursue design protection more simply and efficiently across jurisdictions with a reduced risk of inadvertent loss of rights owing to failure to satisfy a given formality requirement of a particular office.
This project was started in 2018. At the 2019 Annual Meeting, the ‘Recommended Design Practices’ documents were published so that ID5 Partners could receive user input. After considering and discussing that input, the ID5 Partners will establish further recommended practices as a next step of cooperation at the 2020 Annual Meeting.
Recent developments in the Offices
CNIPA is currently working on amendments to its domestic legislation, which will address the scope of priority rights, extend the term of protection for registered designs from 10 years to 15 years and improve the system for reporting on the evaluation of designs. Amended Guidelines dealing with the expansion of protection for designs involving GUIs and a deferred examination system have been in place since November 2019.
The JPO has made changes to its design law and examination manuals which cater for expansion of the scope of protection, enhancement of the system pertaining to related designs and a change in the duration of design rights.
KIPO has introduced a hybrid system for design registration, with two types of examination: 1) a general substantive examination system and 2) a partial substantive examination system for designs falling in Locarno classes 2, 5 and 19.
The partial substantive examination system accounts for about 17% of all examinations. The pendency to first action for the partial substantive examination system has been shortened from 60 to 10 days. As part of its future plans, KIPO is considering whether to expand the scope of design protection, provide for punitive damages for design infringement and relax requirements relating to the indication of the product.
The USPTO summarised statistics of its recent design patent filings. The first action pendency time is now 14.1 months while the total pendency is now 20.6 months. The Office’s inventory of design patent applications has been gradually increasing. The first action pendency for International applications made under the Hague Agreement is now 9.3 months. However, International applications are slightly more likely to attract reasons for refusal than US national design patent applications. The total pendency for the “rocket docket” is now 8.5 months.
WIPO reported on the situation of countries participating in the Hague System. In fact, Vietnam, Israel and Samoa have recently been incorporated into the Hague System for international design registration. China, Brazil, Columbia and Mexico are presently under consideration to join.
Forum session-opinions from user associations
Dealing with the topic “Expectations for More Efficient and User Friendly Industrial Design Protection: Where exists the need from global users?”, several user groups who had been invited by the ID5 countries to give their opinions mentioned their expectations for more efficient and user-friendly design protection.
Almost all the speakers pointed out that there were currently a variety of different laws and practices across different countries and regions. Most suggestions for improvement made by the users were related to the need for greater harmonisation.
Examples of areas to be harmonised include: the grace period, priority document exchange systems, criteria for design representations, deferment of publication (secret design system), faster examination, treatment of partial designs, treatment of related designs, the duration of design rights, examination standards for assessing similarity of designs and sufficiency of disclosure related to the right to priority.
FICPI’s view and involvement
The five design offices in ID5 handle over 80% of worldwide applications for design registration and hence are an important force. FICPI’s attendance at these meetings ensures that independent IP attorneys receive early awareness of developments and up to date information from the FICPI representatives, which can also be taken into account for building FICPI’s positions and establishing work groups, as well as feeding more directly into client work and building IP value for clients.