Design Filing Strategies UNION Round Table Turin, October 7, 2010

UNION Round Table Turin, October 7, 2010

Design Filing Strategies

Jean Jacques Canonici Director and Patent Manager, Procter & Gamble & Braun; Brussels. Linda Liu Chinese Patent Attorney, President and Legal Representative of Linda Liu & Partners, Beijing, China. Kozo Takeuchi Japanese Patent Attorney; Vice President, Fukami Patent Office, Japan. Pier Giovanni Giannesi Director, Industrial Property Department, Pirelli & C. SpA, Milano. AGENDA

1. Set your Design Application for Success

2. Set your Design Application for Success everywhere you need it

3. Set your Design Application for Success as part of Holistic IP Protection Set

4. Conclusions and Recommendations 1. Set Your Application for Success

• SCOPE

• VALIDITY SCOPE: DYSON UK 2 043 779 Set for success ?

…. May be not …..

Everything in the representation will contribute to “the overall impression”, including “Look and Feel”. SCOPE: is this better ? RCD: 000218441-0001

Yes, this goes in the right direction. • Forces some strategic thinking. • Eliminates some ‘Look and Feel’ elements. But still much too detailed. SCOPE: is this the Ultimate? RCD: 000218441-0001

For sure, this reflects the right Strategic Approach Use pre-filing Strategic Thinking to maximize Scope

•Know the background – Design Corpus •Talk to Designers •Identify Key Elements •Foresee what competitors may do ! Reflect Strategy in Representations

•File separately on Stand-alone parts •Protect Alternatives •Avoid showing secondary details •Use Dotted lines / Disclaimers Stand-Alones Alternatives Alternatives Dotted Lines

Dotted Lines : Handle with Care !! VALIDITY: Use dotted lines strategically.

There must be enough solid lines left, to give the Design a meaning !

At OHIM, Description /Locarno Class do NOT count !

Possible use of Disclaimers at WIPO (Hague Filings) P&G’s Wings design case: RCD 000121017-001 This may have helped: VALIDITY: Leverage Shape/ Color Combinations 2. Set Your Application for Success everywhere you need it

•Foresee International Filings !

--Type of Views -- Number of Views -- Multiple Filings CHINA and JAPAN Foresee International Filings Notes in Patent Application for Designs in China

LINDA LIU & PARTNERS

LINDA LIU GROUP

www.lindaliugroup.com [email protected]

20 Typical Chinese Design Patent (I) Six-side views and a perspective view

Top view

Left viewFront view Right view Back view Perspective view

Bottom view 21 Typical Chinese Design Patent (II) Enlarged view of a certain part and sectional view

Front view Right view Perspective view

Enlarged view C-C region C-C region of portion B-B D-D sectional view Enlarged view of portion A-A 22 Typical Chinese Design Patent (III) Color photographs

Top view Perspective view

Left viewFront view Right view Back view 23 General Requirements on Drawings and Photos

Submit six-side views, otherwise explain reasons for omittance, e.g. • For vehicles, the bottom view is omitted because the essential feature does not lie in the bottom portion. • For tires, the left/right view is omitted because they are identical.

Drawings (line view) shall be drawn by solid lines without other types of lines or text, unless • Double-dotted lines or natural geosutures used to show the omitted part of a long and thin product • Indicative lines and text used to indicate the section place and direction, enlarged parts and transparent parts C (indicate in the B brief explanation that part C is transparent)

Photographs • Plain background, which shall have distinction in brightness from the design (That is, make it easy to distinguish the design from the background even after a color photo is converted into black-white) • Orthographic projection • Avoid strong light, blinking, shadow, reflection × 24 Are Color Photos or Rendering Drawings Acceptable?

• All the views (six-side views + perspective view or reference view) may be color photos or rendering drawings.

• Or the six-side views are line views, while the perspective view or reference view is a color photo or rendering drawing.

• Where protection for color is claimed, it shall be indicated in the brief explanation. Without such indication, the color in a color photo or rendering drawing shall not constitute content under protection.

25 Brief Explanation (I) --Is it obligate? What content? Does it affect the enjoyment of priority right?

• Must be filed (A27), otherwise the application would not be accepted (fail to get an application date and an application number, which can perhaps affect the enjoyment of priority right)

• Contents of the brief explanation (R28): • title of the product • use of the product • essential feature of the design • designate a drawing or photograph capable of best showing the essential feature of the design • others (optional) − omitted views − claim protection for color − for related designs, designate one design as the main design − unit patterns of a plane product are connected in two sides or four sides, such as printed cloth, wallpaper − a part of a long and thin product is omitted − the product is made of a transparent material or a new material which creates special visual effect − for a product in set, indicate the names of the items in the product set • If the priority application does not include a brief explanation, the enjoyment thereof will not be affected as long as the brief explanation filed in China is within the scope of the priority application

26 Brief Explanation (II) －－what use？

Uses of a brief explanation: • interpret the design of the product as shown in the drawings or photographs (A59) • determine classification of the product (application procedure) • determine use of the product and then determine the classification of the product (infringement procedure) (Legal Interpretation No. 21 [2009], item 9 of the Supreme Court) • determine essential feature of a design (infringement procedure) (Legal Interpretation No. 21 [2009], item 9 of the Supreme Court)

There are no design infringement cases up to now, so it is unclear how the court will make use of the brief explanation (particularly, the function in determining the essential feature of a design) • as long as the design is patented and the brief explanation complies with the provisions of laws • not clearly affirm or negate anything in the brief explanation, e.g. − The essential feature of the design lies in the main tread of a tire; − The essential feature of the design does not lie in the sidewall of a tire. Typical draft of the brief explanation • A tire for vehicles, of which the essential feature is shown in the drawings. The perspective view is indicated as the view best showing the essential feature of the present design.

27 Is a reference view necessary?

• A reference view may be filed to indicate –use shadow lines show a – methods of use transparent portion – places of use – state of use – transparent portions – others of the product incorporating the design • Shadow lines, broken lines, indicative lines and character marks may be used in a reference view • Legal effect of a reference view – It can be taken as amendment basis (e.g. amend the front view based on the reference view)

28 Are broken lines allowable?

• unallowable in six-side views, but allowable in a reference view • For broken lines in a priority application, when entering Chinese phase, • change to solid lines (e.g. broken lines indicating the portion for which no protection is claimed in some Japanese designs) • Delete (e.g. broken lines indicating invisible portions in European designs)

• Influence on the enjoyment of a priority right • No influence, as long as the amended contents can be directly determined based on the priority right.

• Influence on the scope of protection • The portion amended to be expressed by solid lines constitutes a part of the scope of protection, thereby reducing the protection scope. To overcome this disadvantage, it is feasible to indicate the portion to be protected (distinguishing from the prior design) (Legal Interpretation No. 21 [2009], item 9 of the Supreme Court) − In the brief explanation − In a reference view, expressing the portion to be protected with solid lines and the rest with broken lines.

29 Can an application contain more than one similar design?

YES Degree of “similarity” • Except “obviously” dissimilar • Examples for “similar” − difference lies in slight changes in some fine details − usual design − repeated arrangement of a design unit − change of color element Not a ground for invalidation (similar to unity of a patent for invention) Fees • Pay for only one application rather than the number of the designs One application may contain at most 10 similar designs. After October 1, 2009, it no longer is feasible to file more than one application respectively for several similar designs. Otherwise, • Applications filed later will be invalid (A23); • For applications filed on the same day, the one granted later will be invalid (Section 2.1 of Chapter 7 in Part II of the Guidelines for Patent Examination); • For applications filed on the same day and granted on the same say as well, − The one for which a request for invalidation is made will be invalid (it’s up to the petitioner rather than the patentee); − If a request for invalidation is made against all the applications, the patentee can select to remain one of them.

30 There is no short-term unregistered design in China. Want to be protected? File first !

31 Thank you !

www.lindaliugroup.com [email protected]

32 Union Round Table Design Protection Strategies Filing, scope, Validity

Filing Strategies in Japan -Four points to be noted-

Kozo Takeuchi Japanese Patent Attorney

October 7, ‘10 The Japan Design Law

First to file Rule SubstantiveExam.・・・ex officio exam. Publication・・・No opposition system Filing requirements in Japan

Petition ・・Applicant’s name and address, Name of a product etc. Drawings, Photographs or Specimen Power of attorney Convention Priority Documents -Four points to be noted regarding the Japan Design Law

1. Design is not separable from a product 2. One design is realized on one product 3. Many views are generally required 4. Strict Rule of Amendment Definition of a design in Japan

A design consists of a motif and a product ・・・Motif means configuration, pattern, color and combination thereof

(Community Design) (Japan Design) Design＋Products Motif＋Product 1. Not separable from a product

Design is realized only when applied on a product e.g. Emblem× Type face × Calender ○ Handkerchief ○ 2. One design is realized on one product

If there are three products, there will be three designs. fountain pen Motif ball point pen pencil ３-1 Many views are required

When filing a design application, drawings of six views are generally required. ３-2 Many views are required

・In case of three dimensional design, the following 6 views are needed: ・front view ・back view ・plan view ・bottom view ・right side view ・left side view ・Other views will be needed: ・perspective view ・sectional view ・reference view 3-3 Many views are required

・In case of two dimensional designs, the following 2 views are needed: ・surface view ・rear view

・Exceptions: When the rear view is the same or symmetrical or has no pattern. 3-4 Reg.1350227, by Samsonite 3-5 Reg.No.1340405 for bags by Chloe 3-6 Reg. No.１３４５６８２ for fabrics by Montblanc surface view (Rear view was omitted because of no pattern ) 4-1 Strict Rule of Amendment

1. Amendment is possible if it does not change the gist of the design 2. Amendment changing the gist (1) Exceeding the scope of identity ・cars → toy cars × (2) Making the unknown gist of the design clear ・bottles → water supplying bottles for pet-breeding boxes × 3. Amendment changing insignificant portions ○ 4-2 Strict Rule of Amendment

Amendment of a color of a design is not acceptable. 5-1 An Appeal Case in Japan

•Basic Application (Community Design)

Laid open to the public

•Japanese Design Application with a claim to the Convention Priority. 5-2 Basic Application (CD Reg.000558093) 5-3 Japanese design application 5-4 Can the Convention priority enjoyed ? Thank you for your attention.

Kozo Takeuchi Japanese Patent Attorney

3. Set your Design Application for Success as part of Holistic IP Protection Set

1) Manage publication 2) Designs / patents 3) Designs / Trade Marks. Manage Publication Not all countries allow for deferment

Country Publication Deferment of Publication China 2 months after registration Not allowed 11 to 14 months from filing Colombia 1 month from filing Not allowed

Hong Kong 2 months from filing Not allowed India Usually 6 months from filing Not allowed Mexico At grant (9-12 months from filing) Not allowed

Manage Publication

• Need for late publication • Forego countries with early publication? • Defer First Filings? • Try to delay examination?

• Publish when needed! • Activate publication on deferred cases, in time! Round Table - Torino 7 october 2010

THE TYRE CASE

As Pirelli Industrial Property Department, we mostly deal with cases relating to tires, and this kind of products - probably more than others - shows an inevitable mixture of both technical and aesthetical issues.

If you imagine a running car, and you focus on its interface with the ground, you will realize that such interface, which is called “footprint area” does strictly depend upon the tyre tread pattern.