Harmonizing Designs

WIPO member states approve diplomatic conference to debate Design Law Treaty, to conclude no later than 2024.

WIPO reported on Thursday, July 21, 2022, that its members have decided to convene a diplomatic convention on a Design Law Treaty (DLT), to conclude no later than 2024.

Diplomatic conventions are held to negotiate and adopt or revise multilateral treaties.

At the 55th annual General Assembly, attended by delegates from 193 member states, notwithstanding some reservations, it was decided to convene the diplomatic convention on Design Law, along with a diplomatic convention relating to Intellectual Property, Genetic Resources and Traditional Knowledge Associated with Genetic Resources.

WIPO lists its previous discussions dealing with the convening of a conference for the adoption of a Design Law Treaty in document WO/GA/55/4 (2022), and earlier in document WO/GA/47/8 (2015).

The USPTO Industrial Design Policy website notes that the proposed Design Law treaty is a formalities treaty that would require contracting parties that accede to the treaty to adhere to certain requirements with respect to the formalities associated with applications for the protection of industrial designs. If adopted, it could lead to a more streamlined, harmonized process for filing and protecting design rights around the world.

For years, attempts to convene a diplomatic convention on the DLT stalled on issues regarding technical assistance and capacity building for developing countries for treaty implementation, and also on convening a diplomatic convention to advance WIPO’s normative agenda on the protection of genetic resources associated with traditional knowledge.

Now at its annual General Assembly of member states, as opposed to first passing at a meeting of its Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), where more discussion on the subject might occur, or at the IGC regarding Genetic Resources, Traditional Knowledge, WIPO members have generally agreed to a proposal, submitted by the Africa Group, except the date for conclusion of the conferences is extended from 2023 to 2024.

Some members expressed concern about a break from consensus, lack of time to review and debate the proposal, the proposal’s characterization of IGC report status, and combination of DLT and IGC issues in a single diplomatic conference.

Draft articles for the DLT were proposed by the United State at the 35th SCT session, in 2016. As general principles, nothing in the Treaty or the Regulations is intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial designs as it desires, and nothing in the Treaty shall derogate from any obligations that Contracting Parties have to each other under any other treaties.

Interestingly, the draft DLT notes that it does not contain a definition of industrial design; the DLT would apply to any industrial design that can be registered as an industrial design, or for which a design patent can be granted, under the applicable law. Accordingly, the question as to what matter can be protected as an industrial design remains an issue to be determined by the law of each Contracting Party.

The draft text of the treaty sets forth maximum formalities requirements that contracting parties can impose on design applicants and owners. Examples of its provisions include:

Limits on the requirements that contracting parties can impose as a condition for granting design application filing dates to applicants;

Requirements that contracting parties provide design applicants with certain flexibilities, including flexibilities for applicants who miss a time limit during the application process or who unintentionally allow the registration to lapse;

Requirements that contracting parties must allow design applicants to correct or add a priority claim to an application in certain circumstances;

Requirements that contracting parties provide for a grace period during which public disclosure would not affect novelty or originality requirements for obtaining the right; and

Limits on the requirements that contracting parties may impose as to when applicants can be required to obtain local representation to take an action before the local office.

A preparatory Committee will convene in the second half of 2023, to establish the necessary modalities of the Diplomatic Conference. The Preparatory Committee will consider at this time, the draft Rules of Procedure to be presented for adoption to the Diplomatic Conference, the list of invitees to participate in the conference, and the text of the drat letters of invitation, as well as any other document or organizational question relating to the Diplomatic Conference. The Preparatory Committee will also approve the Basic Proposal for the administrative and final provisions of the Treaty.

Belarus, Indonesia and Saudi Arabia previously offered to host a diplomatic convention on a DLT.

We look forward to reporting future developments on the diplomatic convention on a DLT and design law harmonization.

For more information, contact the author below:

George Raynal, Principal

(george.raynal@designlawgroup.com)