WIPO Design Law Treaty (DLT): AIPPI participates to the preparation of the Diplomatic Conference

2024 should see the adoption of the DLT, which will complete the WIPO treaties in the fields of patents, trade marks and copyright. What exactly is involved, and what role will AIPPI play?

What is the DLT (Design Law Treaty)?

WIPO has been working for many years on the development of a new international treaty on Design, which will complement the existing patent and trademark treaties.

In July 2022, the WIPO General Assembly decided to formally launch the process of adopting this new treaty.

The draft treaty is available under this link.

The aim of the DLT

The DLT aims to harmonise part of the design law, more specifically the application procedures, as well as other matters. For example, the draft treaty deals with the different steps of filing, the publication of applications, the grace period, the manner in which the design application should be made (e.g. representation of the design, description, etc.), or the obligation to record licences in the IP registers and the sanctions in case of failing to comply.

The draft treaty does not concern topics such as scope of protection or validity conditions, which are at this stage too diverse between countries.

The process for adopting the DLT

The diplomatic conference will take place in 2024.

In October 2023, WIPO, members states, intergovernmental organizations and NGOs will prepare the diplomatic conference at two meetings.

From October 2 to 6, 2023, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications will hold a special session dedicated to the preparation of the basic proposal for the diplomatic conference to conclude and adopt a design law treaty.

See here the agenda.

From October 9 to 11, 2023, the preparatory committee of the diplomatic conference to conclude and adopt a design law treaty will be organized at WIPO in Geneva. The venue for the diplomatic conference will be decided at that time.

See here the agenda.

The DLT should be adopted in 2024.

AIPPI’s role in the process for adopting the DLT

AIPPI is a permanent accredited observer at WIPO. It is to be welcomed that AIPPI is associated by WIPO with this new diplomatic conference and with the adoption of a new design treaty.

AIPPI will be represented by Guillaume Henry, second deputy reporter general and Chris Carani, chair of the Standing Committee on Design.

AIPPI has prepared a position paper on the draft treaty, indicating where improvements could be made to achieve a higher degree of harmonisation or to propose more effective rules.

AIPPI resolutions on designs will provide a very important foundation for the positions that AIPPI will be pushing during this conference.

This position paper has been prepared by the Standing Committee on Design, in coordination with the Reporter General Team (notably Guillaume Henry).

This position paper will of course be based on the numerous resolutions on designs that AIPPI has adopted, and in particular:

2021: Industrial Designs and the Role of Prior Art (Q278)

2018: Partial Designs (Cancun)

2016: Requirements for Protection of Designs (Milan)

1982-1983-1985: Legal and Economic Significance of Design Protection (Q73 – Moscow-Paris-Rio)

1964-1966: Unification of the Law on Industrial Designs and Models (Q34 Salzburg-Tokyo)

1960: International Protection of Works of Applied Art, Designs and Models (Q34 – London) on the draft prepared by the committee of experts to revise the Arrangement of The Hague

The tremendous work done by the National Groups, the Study Committees and the Plenary Sessions are of course immensely useful for preparing the position paper and defending AIPPI’s positions during the diplomatic conference. Thanks to all the members who have worked on the resolutions on designs since 1960!

We will keep you informed of the outcome of the preparatory sessions which will take place at WIPO in Geneva from October 3 to 11, 2023.

Some positions of AIPPI

AIPPI will be sending comments on the draft articles of the DLT to WIPO in the next few days.

Here are just a few of the positions AIPPI will be taking in the run-up to the preparation of the diplomatic conference.

• For instance, Article 3 (application) of DLT draft provides that: “(1) [Contents of Application; Fee] (a) A Contracting Party may require that an application contain some, or all, of the following indications or elements: (…) Option A [(ix) a disclosure of the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design;] OR Option B [(ix) an indication of any prior application or registration, or of other information, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design] [Footnote: Other information could include, among other things, information relating to traditional knowledge and traditional cultural expressions.]”.

AIPPI is supportive of Article 3, but without paragraph (ix), whether Option A or B. Paragraph (ix) is not consistent with the DLT’s stated goal of simplifying and streamlining design right procedures. Inclusion of paragraph (ix) would serve to complicate and obfuscate matters.

Further, the addition of paragraph (ix) is not needed and inconsistent with the concept of novelty. A design right only protects the novel overall appearance of a product. A design right does not independently protect any constituent visual portions of that overall appearance (see AIPPI Resolution, Requirement for protection of designs, Milan, 2016, para. 6: “a Registered Design should protect the Appearance of a Product, but should not protect separately or independently any constituent visual portions of that Appearance.”- emphasis added).  Thus, whether a constituent element is found in the prior art, and is thus not novel, is irrelevant to whether the overall appearance of the design is novel.  Stated differently, the only operative question is whether the overall appearance of the design is novel, not the novelty of any individual elements.

• Regarding the grace period (Article 6 of the DLT draft), AIPPI supports a 12-month grace period. Specifically, AIPPI supports a 12-month grace period whereby any public disclosures made during the 12 months immediately prior to the effective filing date of a design right shall not be deemed prior art to the design right provided that the disclosure is either (i) made by, or through, the designer, applicant or owner, or (ii) made by a third person as a consequence of a wrongful or illegitimate act in relation to the designer, applicant or owner (see AIPPI Resolution, Q 278, Industrial Designs and the Role of Prior Art, 2021, para. 6).
• Article 9 entitled “Publication of the Industrial Design” provides that: “(1) [Maintaining the Industrial Design Unpublished] A Contracting Party shall allow the industrial design to be maintained unpublished for a period fixed by its applicable law, subject to the minimum period prescribed in the Regulations”.

AIPPI is supportive of a deferral period of 1 year (see AIPPI Resolution, Q73, Legal and Economic Significance of Design Protection, Paris 1983, para. 3(f): “The deposit can be kept secret for a period which should be short but at least one year”.)  A 1-year deferral period fairly balances the user’s desire to control the first release of a product embodying the industrial design against the public’s legitimate need to know designs for which protection has been claimed. Harmonisation on a deferral period is particularly important as maintaining an industrial design unpublished in one jurisdiction serves no purpose if the design is published in another jurisdiction.

Contact: g.henry@aippi.org