WHEN VIEWS GET IN THE WAY OF PRIORITY RIGHTS
IN DESIGN APPLICATIONS
Priority applications are essential for taking designers to the global level. It enables protection in multiple countries and, therefore, makes sure that legal actions can be taken in case of infringement. However, the way priority applications are examined by the PTOs might get in the way of this progress.
Protecting intangible assets is much more than just law – it is making sure your creations are legally protected wherever you market your product, so that you can get economic return when investing on innovation. When it comes to making your creation scalable to global perspectives, you need to protect your creation in multiple jurisdictions.
Thus, the Paris Convention´s priority right comes into play, that means, applying for design protection with one of the hundreds of members of the Union, an applicant might request priority application rights within six months from the first filing date in any other jurisdiction that is also a member of the Union. This generally is an easy task, as the majority of countries do not conduct substantive examination on Industrial Designs, but that is not always the case.
The Brazilian Patent and Trademark Office (BPTO) recently released its first Industrial Design Guidelines, which went into force in March 2019. According to this resolution, among other procedures, the BPTO will conduct a technical analysis in order to check whether the application filed in Brazil matches the priority application in every detail.
This essentially means that, for design applications in Brazil, in case the jurisdiction of origin has different representation protocols for industrial design applications filed in Brazil, it will be much harder to retain the priority right.
In a survey conducted by FICPI in various jurisdictions, it was found that most of the countries do not take into account minimal changes in priority applications’ representations. In fact, this is even expressed in multiple design regulations and guidelines, such as in Europe, Canada, and the United States. Also, in order to preserve design rights and to foster innovation and design protection globally, design owners must be able to have their design protected in different jurisdictions, having their priority rights duly respected.
Therefore, for the sake of global design protection, it is necessary that countries adopt a procedure that allows priority designs to be registered with their respective priority date in case of substantial similarities between the original and the priority applications, but not demanding identical representations. This will further the global reach of intangible assets and allow the expansion of innovative designs.
As we make our way through the fourth industrial revolution, products and services that used to be seen as futuristic are slowly making their way to the shelves with increasingly lower prices. Amongst those newly developed technologies, the ability to interact with virtual objects or entire virtual environments is becoming a reality.
Virtual designs, which can be defined by three distinct categories: Augmented Reality, or AR, is an interactive experience in a real-world environment, in which objects that reside in the real-world are "augmented" by computer-generated perceptual information. Virtual Reality, also known as VR, is a three-dimensional, computer generated environment, which can be explored and interacted with. Finally, Projected Designs, or PD, is when a virtual design is projected onto a supporting surface for interaction.
Intellectual Property experts, organizations and even official Offices have been concerned about the protection of such virtual designs. This is because, in multiple jurisdictions, for an object to be protected as a design, it must be applied on a product – or, in other words, it must be a tangible object. This concept applies to laws and treaties that were established centuries ago, but now technology is surpassing existing laws which is forcing them to be modified to avoid obsolescence. Thus, in a global survey conducted by FICPI, it was observed that although the laws of the countries have at least some degree of uniformity among them, the countries should take measures to protect virtual designs with correspondingly updated laws.
In addition, recognizing the existence of virtual design also means taking into consideration that protected designs can be infringed not only in the real world, but also in virtual environments. Including protected designs in virtual environments may give the user an idea of endorsement, exclusivity and add value to the experience itself, which is the main reason why it does not matter if the infringement is done in the real world or in a virtual environment. Nonetheless, the fourth industrial revolution is upon us, and if the IP community as a whole does not address this issue in the legal framework soon, we might see ourselves striving for the recognition of such rights in the courts, which is hardly the ideal scenario for setting such important rules for the IP community.
FICPI conducted a research on the protection of Virtual Designs (in augmented or virtual realities) amongst multiple jurisdictions, and concluded for the protection of such designs.
This article aims to discuss how jurisdictions deal with the protection of designs that have been created using the help of immersive technology (hereinafter referred to as “virtual designs”).
The initial suggestion for this topic was provided by CET President Coleen Morrison, and CET 2 group adopted it as an active topic in Toronto 2018. The group decided that Mariano Soní and Stephen Perry would act as Topic Owners, creating a questionnaire to be replied by members (hereinafter “survey”), with guidelines and suggestions provided by CET 2 Chair Gabriel Di Blasi and Reporter Jürgen Buchhold.
Virtual designs become increasingly more prominent as all of us become further enmeshed in virtual environments or even projected in real environments.
Such designs, developed by companies within a wide spectrum of business activities such as entertainment and product design, are usually accessed by consumers via hardware capable of projecting virtual images of all sorts – such as virtual keyboards or memorabilia.
The technologies used to enhance virtual design can be divided in three different categories: Virtual Reality (VR) is a three-dimensional computer generated environment which can be explored and interacted with; Augmented Reality (AR) is an interactive experience of a real-world environment whereby the objects that reside in the real-world are "augmented" by computer-generated perceptual information; while Projected Designs (PD) is when a design is projected onto a supporting surface for interaction.
As a consequence of the technological development of technological environments, companies are increasingly using designs that are or could be protected as industrial designs in IPOs in multiple jurisdictions, creating a discussion regarding the enforcement of design protection in this new environment. Consequently, virtual designs are by-products of technological developments and intellectual property law must address the requirements of this new field. The future law of design patents and registrations will need to innovate.
Related efforts are already being made all over the world.
Several jurisdictions have already made their own legislative changes to meet the requirements of the new types of design, including animated designs, graphical user interfaces (GUIs), intangible objects, and other new forms of design representations.
This can be noted, for example, in the “Information Note on Virtual Designs and Non-Physical Products”, updated October 6, 2017, released by the Intellectual Property Office of Singapore, according to which “Virtual designs refers to the designs of intangible objects. Such intangible objects may be projected onto a surface, or into a medium (including air)”.
The search for a common definition can also be observed in latter discussions hosted by the international cooperation framework Industrial Design Five - ID5. Recently, the members of ID5 adopted a Joint Statement on the Fourth Industrial Revolution, pursuing the objective of strengthening protection of designs in a new technological environment, encouraging the adoption of new technologies for administrative systems of industrial designs and providing user friendly services using new technologies for applicants of design systems . Furthermore, the ID5 compiled the results of a comparative research project concerning the design protection systems of the five offices, including practices for the protection of new technological designs which are derived from digital technologies
Given the rise of the Fourth Industrial Revolution, the development and popularisation of Virtual Designs (in particular corresponding new types of designs), the needs of the designers and the entrepreneurs, FICPI’s CET 2 group is exploring this topic to find out how the different countries are dealing with that subject matter.
In order to evaluate the current status of Virtual Design protection within multiple jurisdictions, CET 2 carried out an internal survey with its members. The survey collected the replies of representatives of 19 countries: AR, AU, BR, CA, CN, CH, DE, IE, GB, IT, MX, NZ, NO, PT, RO, TR, US, ZA.
After analysing the results, CET 2 concluded that the protection of virtual designs currently depends on whether and to what extent a virtual model, a virtual product, or a virtual surrounding, for example an object projected onto a surface or into a room, is accepted by a jurisdiction of a country as a subject of protection, namely in the scope of the conceptual Idea of the design and not related on a physical or real product. A physical reproduction of a design must be possible, but should not be considered as a sine qua non condition for an effective design protection.
Furthermore, in order to guarantee that designs are duly protected, it should be considered that design right titleholders should be able to take action against companies that reproduce a protected design in Virtual/Augmented realities.
A global survey conducted by FICPI lead the Federation to speak up against the examination of priority applications based on identical representations of the objects.
This document aims to discuss how jurisdictions take into consideration the Priority Right, as set out by the Paris Convention Treaty, as it applies to Industrial Design Applications.
This topic was proposed by Chair of CET 2 Group, Gabriel Di Blasi, once the Brazilian Patent Office recently issued Guidelines stating that this right should only be granted to Priority Applications which represent an exact match of the first original application – as explained in a more detailed fashion below. This topic was then accepted by FICPI’s Executive Committee during the meeting in Athens, 2018.
CET 2 conducted a questionnaire so that a conclusion could be drawn as to how different PTOs treat priority rights in daily practice.
The Paris Convention Treaty was adopted in Brazil in September 1979 and took effect in June 1984. It established a set of ground rules for Intellectual Property rights. The core of the question studied by the group lies in article 4 (A–1) and 4 (C–1) of this Treaty.
it appears that, despite the fact that many jurisdictions do not require factual identity between the priority application filed in their PTO and the first filed application for a valid priority claim, there are some jurisdictions which take this approach.
In order to confirm this tendency, FICPI’s CET 2 conducted a survey on the topic and obtained replies from members in the following jurisdictions: AR, AU, AT, BR, CA, CN, CH, DE, FI, GB, IR, IT, JP, KR, MX, NZ, NO, PH, PT, RO, TR, US, ZA.
After conducting the survey and collecting and analysing the research, the following conclusions were drawn:
Despite the fact that half of the surveyed jurisdictions conduct substantive examination of the Priority Design Applications filed, in most cases the applicant is free to modify the representations of the object that is subject to design protection in order to better adapt the representations to the rules of the jurisdiction where the protection is sought.
The alterations to the designs represented should not be so significant as to modify the scope of the protection of the design. It is important not to increase the scope of protection beyond what is defined in the first application – if anything, the amount of protection must be either equal to the first application or seek to protect a smaller portion, but never a larger one.
In order to preserve design rights and to foster innovation and design protection globally, design right owners must be able to have their design protected in different jurisdictions, having their Priority Rights duly respected. It is in the spirit of the Paris Convention Treaty to welcome multiple applications and grant the applicant their right to preserve the first filing date (for which was created the Priority right).
In order to avoid the bad-faith use of priority rights, jurisdictions should focus their substantive examinations of the priority applications on whether or not the scope of protection is unlawfully augmented in the second priority application, in which case jurisdictions should invite users to present the original design application that matches the priority design application presented. Minimal differences between those applications should be tolerated. Otherwise, jurisdictions risk undermining the Global Design Industry on the basis of procedural technicalities.
The content of this article is an abridged summary of the report Mr Di Blasi and Mr Buchhold prepared for FICPI's Executive Committee Meeting, held in Turin in April 2019.