Panel Session VIII Partial designs full protection?

Transcription

1 Panel Session VIII Partial designs full protection? Monday, 16 October :00-12:30 g

2 David Stone, Allen & Overy, UK (Moderator) Dunstan Barnes, McAndrews, Held & Malloy, USA Tomohiro Nakamura, Konishi & Nakamura, Japan Robert Wulff, Griffith Hack, Australia 2

3 What do we mean by a Partial Design? 3

4 EU Overview EU design law protects the appearance of the whole or part of a product. Product has to be an industrial or handicraft item. No requirement for the design application to name a product so a design registration protects against any use and prior designs can come from any field. Also a 3 year unregistered design right which protects against copying. 4

5 EU Part of a Product Can protect less than the whole Show just the part. Show the whole and exclude some or most of it (by dotted lines, shading etc). Where the part is a distinguishable portion. Where the part is created along an arbitrary line. With unregistered right, can modify the claim to reflect what s been copied. 5

6 EU Spare parts - Different regime for political reasons. - At EU-wide level component part of a complex product is only protectable if visible whilst in normal use. - complex product must be able to be assembled and disassembled. - no protection for internal parts of machines. - National laws differ some protect non-visible spare parts (France, Germany) and some don t (UK, Spain). 6

7 US Overview US design rights are protected as design patents (under the patent statute), which protect the ornamental appearance of an article of manufacture. Design patents may protect whole products or portions thereof. Title must name an article of manufacture But protects against any use (nevertheless, e.g., car manufacturers will often file for Car and/or toy replica ) For novelty, prior art designs may come from any field For obviousness, asserted prior art must be analogous No unregistered design rights, but protection may be available under copyright or trade dress law 7

8 US - Part of a Product Can protect less than the whole See In re Zahn (C.C.P.A. 1980) (holding that design patents may be directed to a portion of a product; in Zahn, a shank of a drill bit) In the drawings, claimed portions are shown in solid lines Portions forming no part of the claimed design should be illustrated in dashed broken lines Arbitrary boundary lines can be introduced using dot-dash broken lines Optionally, stipple shading can be used to show which portions are claimed The meaning of the different broken lines should be explained in the specification 8

9 US Spare parts Spare parts may be protected using design patents Within the last decade or so, major automobile manufacturers in the US have ramped up their use of design patents to protect new car designs This includes protecting spare parts like bumpers, quarter panels, doors, headlights, and steering wheels (likely in an effort to limit aftermarket parts markets from selling spare parts) In response, aftermarket parts makers (and insurance companies) have repeatedly lobbied Congress seeking an exception for spare parts To date, Congress has not introduced legislation to provide such an exception 9

10 Japan Overview The Designs Act protects the appearance of the whole or part of a product. A design has to be applied on industrial or handicraft products. A design has to designate the name of product to which the design is to be applied. The name of product essentially serves as an element to decide the scope of protection. e.g., A registered design for cars cannot be enforced against toy replicas. Novelty is assessed against designs in the same fields. Inventive step is assessed against any field of designs. e.g., A design for cars can destroy inventive step for a design for replicas. Unregistered designs may be protectable by the Anti-Unfair Competition Act for 3-years, or by the Copyright Act under certain conditions. 10

11 Japan Part of a Product Can protect less than the whole Registered Design Claims of partial protection have to be stated in the application. In the drawings, claimed portions are shown in solid lines or by colouring disclaimed portions. Accused Design Portions forming no part of the claimed design should be illustrated in dotted lines or colouring. Disclaiming portions of designs essentially serve as elements to determine a position, size and coverage of claiming parts on products. (Containers, IP High Court H27-Ne-10077, Jan. 27, 2016) 11

12 Japan Spare parts - Spare parts (and accessories) may be protected by using design registrations. - If a spare part or an accessory is assembled in a completed product, it can be registered as either a design of pure part or accessory (e.g. alloy wheel for cars) or partial design of products (e.g. cars). - A component part of a complex product is eligible to register regardless of whether it is visible whilst in normal use or not. - Protections for internal parts of machines are not excluded. - Using a senior registered design (e.g. alloy wheel for cars) in a completed product (e.g. cars) may be liable for infringement of a senior registered design. ( Associated infringements of Article 26, The Designs Act ) Senior Registered Design for alloy wheels Young Reg./Used Design for cars 12

13 Australia Overview AU design law protects the overall appearance of a product. Not yet determined if part of a product can be enforced. A product is a thing that is manufactured or hand-made (can be a separately made component of a complex product). Validity is determined against prior designs but in relation to a product. Infringement is determined with respect to the product. No unregistered design right. No dual design & copyright protection for 3D designs. 13

14 Australia - Part of a Product - protect less than the whole? Not yet determined (i.e. no determinative Federal Court case law). AU Designs Office does recognise part of a product. Not clear how infringement will be determined, because infringing product must embody the design. Representations must show the product. However, can show the whole and exclude some or most of it (by dotted lines, shading, etc.) and/or by a Statement; for each of the following: Where the part is a distinguishable bit; and Where the part is created along an arbitrary line. 14

15 Australia - Part of a Product - protect less than the whole? bristles 15

16 Australia Spare parts Spare parts not enforceable in AU (for political reasons). A design for a component part of a complex product is not infringed if infringing use is for the purpose of the repair of the complex product so as to restore its overall appearance in whole or part. Repair includes: restoring component; replacing component; necessarily replacing incidental items; maintenance of the complex product. Restore overall appearance in whole no material difference in appearances before and after repair. Restore overall appearance in part if material difference in appearances before and after repair is solely attributable to that part repaired. No jurisprudence yet on AU spare parts law. 16

17 Summary of key issues EU US Japan Australia Can partial designs be protected? Can dotted lines etc be used to designate features not claimed? Can spare parts be protected? Can parts (other than spare parts) be protected when invisible in normal use? If visible in normal use 17

18 Discussion 18

19 Electronic devices (part of -) - APPLE INC RCD Earliest priority date: 9 Sept

20 Grooved Femoral Hip Stem Prosthesis US Patent No. D364,926 (Zimmer, Inc.) Effective filing date: 19 Feb In re Webb, 915 F.2d 1553 (Fed. Cir. 1990) (reversing USPTO board decision that rejected this patent as invalid for lacking ornamentality) 20

21 Vehicle Door Handle (Ford Motor Co.) US Patent No. D677,143 Filing date: 2 November

22 Japanese spark plugs Reg Denso Corporation Reg NGK Spark Plug Co., Ltd. Reg NGK Spark Plug Co., Ltd. 22

23 Summary of key issues Can partial designs be protected? EU US Japan Australia Can dotted lines etc be used to designate features not claimed? Can spare parts be protected? Can a part be delineated where there is no edge (boundary line)? Can a partial design protect a product that is not sold separately? Does unregistered design law protect parts of products? If visible in normal use 23

24 Areas for harmonisation? Partial designs should be registerable. There should not be any requirement that the partial design be sold separately. Partial designs should be able to be represented: a) as a stand alone design; or b) as part of a larger product/article with non-claimed features shown in dotted lines, blurred or another reorganised drawing convention. There should be no requirement of visibility during normal use for parts of design (that are not spare parts). Because of their political/economic complexity, spare parts are an issue for each jurisdiction. There is currently no harmonisation of unregistered design rights, including for parts of products. 24

25 Thanks for your attention!