Industrial Design

  1. Question For Assignment

What is secret design law all about? Do you think that it would be a good idea to introduce this law into our Industrial Designs Act 1996?

Discuss this law in relation to laws of two countries having such a provision and its suitability to our country.

  1. Introduction

What is an industrial design and deferred publication of designs? 

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features such as the shape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. The design features must be applied to an article by any industrial process or means of which the features in the finished article appeal to eye.

A registered industrial design is given an initial protection period of 5 years from the date of filing and is extendable for a further four consecutive terms of 5 years each. The maximum protection period is 25 years.

An industrial design registered in Malaysia is only protected in Malaysia. In order to have your designs protected in other countries, applications for registration will have to be filed within six month from the earliest date when it was first filed in any of the Paris Convention member countries.

Registered designs are open to public inspection and the details of the registration and the details of the registration are recorded in the Register of Industrial Designs and published in the Intellectual Property Official Journal.

In a move to permit designers and companies applying for the registration of designs to keep them secret from competitors until these designs are brought to market, Applicants can now opt to file a request for deferred publication of their industrial design application. This request may be filed simultaneously with the filing of the design application or at any time prior to publication of the industrial design. Accordingly, applicants are advised to file the request for deferred publication at the same time as filing the industrial design application to avoid inadvertent publication of the design application when a subsequent request for deferment is to be filed.

The maximum period of deferment is 30 months from the filing or priority date of the design application. When the application to defer publication is made after the filing or priority date, the permitted period for deferment is the remaining time allowed from the 30 month deferred publication period. Applicants may also request the Office to publish the industrial design application at a specific time, provided that such nominated publication date does not go beyond the allowed deferment period of 30 months.

  1. What happens after the period of deferment of publication?

During this deferment period you may decide whether you wish to “extend” protection to five years from the date of filing. You do not have to furnish a separate request for extension. You simply pay the extension fee within the deferment period.

In the case of an extension, the representation of the design is subsequently published after the expiry of the 30-month deferment period. By filing a separate request, the subsequent publication of the representation may be initiated at an earlier date.

If you have deposited only a two-dimensional specimen when filing the application, you must subsequently furnish a photographic or other graphic representation of the design during the deferment period.

 

  1. Secret designs in the Philippines.

Philippines October 10 2014 The Intellectual Property Office of the Philippines (IPOPHL) has issued Memorandum-Circular No. 14-004 on 20 May 2014 allowing applicants to file a request for deferment of publication enabling designers and companies applying for the registration of industrial designs to keep them secret from competitors until the designs are made available in the market.

The request may be filed upon filing the design application in the Philippines or at any time before its publication. Applicants who want to avail the request may defer publication for a maximum period of thirty (30) months from the filing date or priority date of the application. In case the request for deferment is made after the filing date of the application, applicants are only allowed to defer the publication of its design application for the remaining time from the permitted thirty (30) months deferred publication period. Moreover, applicants may also request for specific publication date of the design application provided that the requested time does not exceed the allowed deferment period of thirty (30) months.

It is advisable to file a request for deferment of publication of design in the Philippines at the time of filing the application since industrial design applications which satisfy the formality requirements.

A).       Submission of the description, claim and drawings;

B).       Payment of the filing fee and other required fees;

C).       Submission of the priority documents, if required; and

D).       Submission of other required documents are published immediately by the Patent office.

This is to avoid inadvertent publication of the design application when a subsequent request for deferment is to be filed.

In order to maximize the benefits of the deferment of publication in the Philippines, it is recommended that applicants file the request for deferment at the time of filing the application or as soon as possible.

  1. Secret designs in the Taiwan.

Under existing practice, the content of a design patent will be published once it is issued. According to Article 86 of the Enforcement Rules of the Patent Law (Taiwan), a patent applicant can, on request, postpone the issuance by up to three months. In light of the Hague Agreement, as well as practices in the European Union, Korea and Japan, TIPO proposes to introduce a system of deferred publication for design patent applications. Under the system, a design patent may be issued first and published later. The proposed rules for the system are as follows:-

A).       The timing for requesting a deferred publication commences from the date of filing and ends on the date of payment of the issuance fee and first annuity.

B).       On the date of patent issuance, basic information only (the patent certificate number and the date of filing) will be disclosed. The remaining information will be disclosed on the deferred publication date.

C).       The publication date can be deferred by up to 30 months from the filing or priority date. If the deferred publication date is earlier than 30 months from this date, the applicant can, before such deferred publication, request another deferred publication of up to 30 months from the filing or priority date.

  1. D) TIPO should disclose the publication-deferred design patent to a designated third party in any of the following circumstances:-
  2. i) The design patentee agrees to disclose the publication-deferred design patent to a specific third party; and
  3. ii) Disclosure upon request by:
  4. a) An applicant whose patent application is under examination or re-examination based on the publication-deferred design patent;
  5. b) A party of a patent cancellation action in relation to the publication-deferred design patent; or
  6. c) A party patent litigation in relation to the publication-deferred design patent.

E).        Once the publication-deferred design patent application is issued, no derivative design patent application can be filed based upon it.

  1. F) On the issuance date of the publication-deferred design patent application, the applicant can effect the post-grant amendment to the issued design patent. Once the post-grant amendment is granted, its content should be published. However, if the amendment is related to the substance of the claimed design, TIPO should delay publication until the design patent is published.
  2. G) A cancellation action can be filed against the publication-deferred design patent application once it is issued. If the cancellation action is sustained by TIPO during the publication-deferred period, the deferred publication is waived and TIPO should publish all the information and drawings of the design patent in the patent gazette.
  3. H) A design patentee that has not waived deferred publication should not issue a cease and desist letter to a potential infringer.

TIPO will further consider whether to revise Point 2(8) to read “a design patentee who has not waived deferred publication shall not issue a warning (cease-and-desist) letter to, or file a design patent litigation against, a potential infringer”.

Attendees of the hearing expressed concerns over the likelihood that the deferred publication may inhibit a good-faith effort to design around an issued patent, because the public would not have a chance to know the content of an issued design patent if its publication is deferred. TIPO will deliberate on this and take it into consideration.

 

  1. Secret designs in the Malaysia.

An industrial design registered in Malaysia is only protected in Malaysia. In order to have your designs protected in other countries, applications for registration will have to be filed within six month from the earliest date when it was first filed in any of the Paris Convention member countries.

Procedures an application for registration is as follows:

An application will proceed directly to registration once it is found to be in order. The details of the registration are published in the Official Journal. There is no option of deferring publication on registration. An applicant that wishes to defer publication may seek to delay prosecution. However, an application that is not in order for registration within 12 months of the filing date, due to any default or neglect on the part of the applicant, shall be deemed withdrawn.

  1. Basic Hague Agreement Principles.

The international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration. Pursuant to Hague Agreement Article 10(2), the international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required under Hague Agreement Article 5(2), if such date is later than the filing date. The international registration includes all the data contained in the international design application (including any priority claim where the earlier filing is not more than six months prior to the international filing date),the reproduction(s) of the design, the registration number and registration date, and the class of the International Classification determined by the International Bureau.

The international registration is published by the International Bureau. The applicant may request that publication occur immediately after registration or that publication be deferred for up to 30 months from the filing date (or priority date, if applicable). Deferment of publication is not possible if a Contracting Party is designated that does not permit deferred publication. Absent a request for immediate publication or deferment, the registration will be published approximately six months after the date of international registration. The publication includes the data from the international registration and the reproductions of the industrial design.

 

 

 

  1. Comparison between Malaysia, Taiwan and Philippines about Deferment of Publication of designs.

 

No Title Malaysia Philippines Taiwan
1 National Law provide any Provisions related to Deferment Publication No No, There are no other ways to defer publication. Publication is an essential requisite in the filing of an application. Yes.
2 It would be related to have a provision related to  deferment of publication in Design Law Yes, It would be desirable to have provisions related to deferment of publication in our Design Law as it would give a designer the advantage of keeping a design secret until such time as the applicant chooses and yet be able to enjoy the priority of the original application. No, publication must not be deferred. The requirement of publication aims to protect other interested parties in the registration of the industrial design. With the publication of the application of the design, any interested party may provide any adverse information on the design applied for and any party may also file within the period allowed by the rules to file a petition for cancellation of the application/registration. .
3 System for the deferment of publication of design There is no system for deferment of publication of designs in Malaysia. Deferment can however be achieved by applying for extension of time to pay the publication fees. Once the publication fees are paid, the application proceeds to registration and as soon as possible thereafter, it is published in the Gazette. Thus, by delaying payment of the publication fees, publication will effectively be delayed.

A fee is payable for each extension requested. A request for an extension longer than 6 months will require the applicant to submit a statutory declaration explaining the reason/ s necessitating the period of extension required.

The applicant can, upon receipt of the Notice of Allowance and in the application for attending the payment of sealing fee and the first annuity, file a request for “deferment of publication” for a period of no more than three months (Enforcement Rules of the Patent Act, Article 56)
4 Can the applicant request for the deferment of publication only once at time of filling the application No No
5 Time when the applicant can request the deferment of publication No The applicant can, upon receipt of the Notice of Allowance and in the application for attending the payment of sealing fee and the first annuity, file a request for “deferment of publication” for a period of no more than three months (Refer to the answer for Question 3 above).
6 What is the longest period that can be allowed as a deferment term or secret term for a case? Payment of the publication fees (and hence, publication) can be delayed by applying for extension of time to pay the fees. Longer extension of more than 6 months can be requested but it is subject to the discretion of the Registry to grant the same. The Registry will allow the extension if it satisfied that there is a bona fide need or valid reason for the extension. 3 months
7 When does the period of deferment of publication start? The maximum period of deferment of publication for three months starts from the date when the applicant, upon receipt of the Notice of Allowance and in the application for attending the payment of sealing fee and the first annuity, files the request for “deferment of publication” (
8 What benefits/disadvantages do you see in “Deferment of Publication” in your country? In general “No”, so long as some bona fide need or valid reason can be given to the Registry when requesting extension of time to pay the publication fee. If the publication is deferred, third parties who have an interest in the registration will not have an adequate remedy in case any of their rights are violated. They will not be able to provide any adverse information regarding the design applied for and/or file a petition for cancellation. For this purpose, there must be immediate publication. In one way the applicant could file a deferment of publication; however, in another way since the duration of a design patent is 12 years starting from the filing date, and the actual protection period starts from the publication date, so the deferment of publication will shorten the actual protection period of a design patent

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

  1. Conclusion

Registering an Industrial Design is not like taxing a car. An RID protects the designer’s creativity and enhances his presence in the market. However, the value of the design is not fixed – one must realize its potential. The strategy to be adopted to do this will be unique to each ID owner. It will reflect the company’s wider interests and intellectual property portfolio.

It is opined that Malaysian Industrial Design law should provide for deferment of publication. The delay in publication would keep the ID secret from competitors and provide additional time for market survey and preparation for mass production.

 

The maximum period of deferment is 30 months. This means that for up to 30 months after the filing date there is no publication of the representation and claimed priority, the 30-month deferment period begins on the priority date.

If the publication of the representation is deferred, only the bibliographic data will be published at first. This allows the applicant to save costs, since the application fees will be reduced accordingly. The deferment may be useful if the applicant wishes to wait and see whether his product is accepted in the market or if, for other reasons to keep the design secret for the time being. Furthermore, in that case, the applicant may deposit a two-dimensional specimen for example, samples of lengths of fabrics or wallpapers instead of furnishing a representation of the design.

However, during the period of deferment there is no monopoly protection which prevents any third party use of the design but only protection against copying.

If the applicant have filed a request for deferment of publication, protection is initially limited to 30 months. The deferment period begins on the date of filing the application. If the applicant claim priority, the deferment period begins on the priority date.

As long as the publication is deferred applicant can further develop your marketing strategies or take final preparations for production. During the deferment period the registered design is kept secret. This is very important in the fashion and car industries among others. In these sectors of industry early publication of a registered design might jeopardise the commercial success of the product.

 

References :

  1. http://www2.myipo.gov.my/web/guest/reka-bentuk-perindustrian
  2. http://www.lexology.com/library/detail.aspx?g=2db787a6-544f-4d15-8ca9-494056e1be10
  3. http://www.lexology.com/library/detail.aspx?g=b7d359e0-43ed-4059-a8ef-9c66dccfe438
  4. http://www.lexology.com/library/detail.aspx?g=67ea2a2e-9cf5-49a2-8af8-eff0d0194d98
  5. https://euipo.europa.eu/ohimportal/en/rcd-strategy
  6. https://www.dpma.de/english/designs/procedures/
  7. https://www.dpma.de/english/designs/faq/index.html#a16
  8. http://www.lexology.com/library/detail.aspx?g=24c5b27d-b673-4001-b459-bb02b293f189
  9. http://www2.myipo.gov.my/web/guest/reka-carta
  10. https://www.uspto.gov/web/offices/pac/mpep/mpep-2900.pdf

 

 

 

 

 

 

 

 

 

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Industrial Design

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