The Riyadh Design Law Treaty: Bringing Design Law into the Future

In 2007, I began attending sessions of the World Intellectual Property Organization’s (WIPO’s) Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) in Geneva, Switzerland, to discuss the development of the Design Law Treaty. I attended these yearly meetings typically on behalf of AIPPI. I was consistently intrigued by the opportunity to bring harmony to international design law—an area plagued by discord and confusion, including disagreement over the very terminology used to describe the right (e.g., design patent, industrial design, design registration, design model, aesthetic model, etc.). Fast forward 17 years, and I found myself in Riyadh, Saudi Arabia, attending the final Diplomatic Conference for the Design Law Treaty.

For two weeks, 135 countries and dozens of NGOs discussed the intricacies of design law practice, often into the wee hours of the night. On November 22, 2024, the Member States agreed on final Articles and Rules and adopted the historic Riyadh Design Law Treaty (DLT). Below is a brief summary of the objectives and history of the Riyadh Design Law Treaty, its key provisions, and some reflections on the conference itself.

1. Objectives of the DLT

The DLT aims to harmonize and simplify the procedural requirements for obtaining industrial design protection across Contracting Parties, creating a more efficient and predictable legal framework. Its primary objectives include reducing administrative burdens on applicants by establishing uniform rules and a closed list of filing requirements, promoting transparency and accessibility in design registration systems, and ensuring the timely protection of rights to prevent loss due to procedural delays. Although the DLT does not aim to harmonize substantive design law, it addresses critically important aspects, including application contents, filing date requirements, and the rules for drawings and representations that applicants can use to claim or disclaim specific elements of a design.

2. Brief History of the Road to the DLT

The DLT is the latest in a series of agreements spearheaded by WIPO to create global intellectual property frameworks. Its predecessors include the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks, both of which were instrumental in harmonizing procedural requirements for patents and trademarks, respectively.

The PLT, adopted in 2000, streamlined the patent application and maintenance processes, reducing procedural barriers for inventors operating in multiple jurisdictions. Similarly, the Singapore Treaty on the Law of Trademarks, signed in 2006, modernized trademark registration processes to accommodate technological advancements and the evolving needs of international trade. These treaties laid the foundation for the DLT, which focuses on industrial designs—an area increasingly vital to global innovation and commerce.

The journey leading up to the adoption of the DLT began in 2005 when the decision was made by the WIPO General Assembly to start work on simplifications of industrial design procedures. By 2011, and after lengthy preparatory studies and global surveys, the SCT Committee had developed draft Articles and Rules, which were subsequently debated, amended, and expanded upon. In stark contrast to the fast-paced nature of daily legal practice, the SCT sessions often felt slow and tedious, with lengthy debates over seemingly trivial issues—such as whether to allow notifications by facsimile—leading some to liken the proceedings to watching paint dry. Yet, just when the monotony seemed overwhelming, proposals addressing core principles of design law would come to the floor. These included critical topics like the minimum requirements for a filing date, drawing requirements, visual disclaimers, the minimum and maximum number of views, deferred publication, forgiveness provisions and grace period—issues with significant real-world implications for designers and practitioners alike.

Crafting the language of the DLT was always an exercise in restraint, as one of the DLT’s primary goals was to simplify the process of filing design applications. However, this goal often clashed with the tendency of Member States to introduce the peculiarities of their national laws into the Articles and Rules of the DLT. Time and again, representatives from various organizations intervened to remind Contracting Party delegates of the importance of simplicity. Ultimately, the final language of the DLT strikes the right balance, achieving its objectives and leaving international design law in a significantly stronger and more unified position.

3. Saudi Arabia: A Historic and Fitting Venue

At first glance, I must admit that I was a bit puzzled by the selection of Riyadh as the host city for the Diplomatic Conference on the Design Law Treaty. In my mind, iconic hubs of industrial design like Copenhagen, Leipzig, Tokyo, Milan, and Chicago seemed like natural choices. However, after spending two weeks in Riyadh—especially at the King Abdul Aziz International Convention Center—it became clear that this was an inspired decision. The adoption of the DLT was historic not only for its content, but also for its location. For the first time in WIPO’s history, a diplomatic conference was hosted by Saudi Arabia, marking a significant milestone. Riyadh, a city that seamlessly blends its rich cultural heritage with modern innovation, proved to be the ideal venue for this landmark event.

4. Key Features of the DLT

The DLT consists of 34 Articles and 18 Rules, meticulously crafted to streamline and harmonize international design law. While the entire treaty contains carefully drafted and significant provisions, several stand out for their potential to significantly impact international design patent prosecution. These key provisions are poised to simplify processes, reduce administrative burdens, and promote uniformity across jurisdictions. Here are some of the most impactful elements of the DLT:

• Article 4 – Contents of Application: Article 4 establishes a closed list of the elements and indications that a Contracting Party may require in an industrial design application. Paragraph (1) outlines the maximum permissible contents, which include elements prescribed in the Regulations. Paragraph (3) reinforces this limitation by prohibiting additional requirements. This closed list is a key component of the Treaty, ensuring a predictable and streamlined framework for industrial design application procedures while reducing administrative burdens on applicants.
• Article 6 – Filing Date: Article 6 specifies the requirements for establishing the filing date of an industrial design application. A Contracting Party must accord the filing date as the date on which the Office receives at least the following elements: an indication that registration is sought, information sufficient to identify or contact the applicant or their representative, and a representation of the industrial design. This ensures that applicants can secure a filing date promptly, even if certain formalities are completed later, thereby protecting their rights from the earliest possible date.
• Article 7 – Grace Period (the “Gem of the DLT”): Article 7 mandates a 12-month grace period, allowing applicants to file industrial design applications up to a year after public disclosure without jeopardizing the registrability of their design. This provision enables designers to test market viability or promote their work during this set period. Its appeal lies in addressing global inconsistencies—some countries lack a grace period entirely, while others vary in its duration and scope.

Heading into the Diplomatic Conference, draft Article 6 (later Article 7) was one of the most talked about provisions within the design patent bar. User groups like AIPPI, AIPLA, INTA, FICPI, and GRUR championed a “full” grace period to replace outdated “exhibition-only” rules derived from Article 11 of the Paris Convention, still used in countries like China and India. Today, designs are more likely to make their debut online, through social media, or at investor meetings, rather than at traditional international exhibitions like the World’s Fairs of the past. During the Diplomatic Conference, several delegations argued for deleting the grace period, citing concerns about public policy and claims that it fell outside the treaty’s scope. Representatives from user groups, including myself, were alarmed and worked to rally support to reverse the trend. We highlighted successful grace period implementations in jurisdictions like Australia, Brazil, Singapore, Japan, South Korea, Ghana, the EU, and the US, showcasing their importance for designers.

Ultimately, a grace period was adopted. While implementation will take time, and some countries take out a reservation, the provision is now enshrined in the DLT, marking a historic step forward and the true gem of the DLT. The delegates from the United States, the Netherlands, South Korea, Moldova, and Japan deserve significant credit for their unwavering commitment to this critical provision.

Article 10 and Rule 6 – Deferment of Publication: Under this Article, a Contracting Party must permit the industrial design to remain unpublished for a period established by its applicable law, provided it meets the minimum duration of 3 months set forth in the Regulations. This provision recognizes the value to users of keeping an industrial design unpublished temporarily, allowing them to control the timing of the product’s initial release. However, the benefit of maintaining an industrial design unpublished in one jurisdiction diminishes if the design is published elsewhere. Thus, a minimum period for deferment is desirable.

• Article 14-16 – Relief in Respect of Time Limits; Reinstatement of Rights; Correction/Addition of Priority Claim Articles 14, 15, and 16 establish mechanisms to assist applicants and holders in maintaining their rights despite procedural errors or missed deadlines. Article 14 allows for the correction or addition of priority claims and the restoration of priority rights under specified conditions. Article 15 provides for the reinstatement of rights if a failure to meet a time limit occurred despite due care or was unintentional. Article 16 addresses the correction or addition of priority claims and the restoration of priority rights, ensuring that applicants can rectify certain errors within prescribed time frames.
• Article 19 – Effects of Non-Recording of a License: Article 19 stipulates that the validity and protection of an industrial design are not compromised by the non-recording of a license with the relevant Office or authority of a Contracting Party. Furthermore, it ensures that a licensee’s rights, such as participating in infringement proceedings initiated by the holder or seeking damages from infringements, are not contingent upon the recording of the license.
• Rule 3 – Representations and Visual Disclaimers: Rule 3 specifies the acceptable forms and particulars for representing an industrial design in an application. Applicants may choose to submit representations such as photographs, graphic reproductions, other visual formats accepted by the Office, or a combination thereof, in either color or black and white. The important news here is that the applicant can choose one of the listed formats and the Contracting Party would have to accept that chosen format. Another significant provision on the representations is found in Rule 3(2) which provides that applicants may use dotted/broken lines to show portions of the product that do not form part of the claimed design. This provision has long been on the wish list of designers and this provision marks a significant breakthrough. (For more detail, see AIPPI 2018 resolution on Partial Designs.)  Other notable provisions on drawings include expression permission to use surface shading in the drawings to illustrate contours or volume, and no minimum or maximum amount of views can be required.

5. Next Steps for the DLT

Now that the DLT has been adopted, the next phase involves its formalization and implementation. Member States will have a designated period to sign the treaty, followed by their respective processes for accession or ratification. Each country must then work to incorporate the treaty’s provisions into their domestic legal frameworks, a task that will vary in complexity depending on existing national laws. Implementation will require collaboration among governments, practitioners, and industries to ensure that the DLT’s harmonized principles are effectively applied. While this process will take time, the commitment displayed by the Member States during negotiations provides hope for timely adoption and meaningful progress.

6. A Milestone for Design Law

The adoption of the DLT is a historic achievement, marking a transformative moment in the evolution of international design law. By harmonizing procedures and introducing critical provisions like the grace period, the treaty places design law in a stronger, more unified position, offering enhanced protection and accessibility for designers worldwide. For me, having had the privilege of being part of this journey over the past 17 years, it has been an incredibly rewarding experience. The dedication and collaboration from all involved have been inspiring. Here’s to hoping the implementation doesn’t take another 17 years, but regardless of the timeline, the groundwork has been laid for a brighter future for design law.