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CLASS 99


The blog for design law, in Europe and worldwide. This weblog is written by a team of design experts and fans. To contribute, or join us, or for any other reason, email class99@marques.org.

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David Musker
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WEDNESDAY, 24 JUNE 2020
BOIP declares June 2020 the “Month of New Ideas”

The Benelux Office for Intellectual Property (BOIP) is offering the i-DEPOT electronic tool for free during June. Hugues Derème, Deputy Director General, and Saskia Smits, International Cooperation Officer, explain more:

The i-DEPOT, the electronic tool allowing one to record the existence of an idea, is temporarily free!

Normally, an i-DEPOT costs €37 (for five years). However, during the whole month of June 2020, anyone can file i-DEPOTs free of charge, without limit.

Filing is available online 24/7 and it takes only a few clicks and a few minutes to receive an official certificate. This is a very useful tool for any entrepreneurs and creators!

What is the i-DEPOT?

The i-DEPOT is a means of proof, allowing one to establish the existence of an idea at a given date. It can include any kind of content: a text, a multimedia file, a drawing, a concept, a project…

The content remains secret (except if the holder wants to publish it). The i-DEPOT is an official title of which the legal value is granted by an international treaty (BCIP). In addition, because the i-DEPOT is sealed with an electronic signature conforming with the EU Regulation, it is legally binding and admissible as valid evidence in any court of law in the EU.

Although it does not confer an IP right, it is the ideal tool to prevent conflicts and safeguard rights. With the digital version of the i-DEPOT being in use since 2007, BOIP has already received more than 50,000 filings from all over the world.

Because the i-DEPOT, as a means of proof, is not limited to a specific territory, we deem it useful to send this information to you, so that you can spread the word and give entrepreneurs and creators in your region or network the opportunity to benefit from this extraordinary action.

Equally, do not hesitate to let us know if your organization has tools or solutions that you would like to communicate about: this way, we pool our efforts and make it work!

You can download a complete communication kit about the action and find out more on our website or contact our Information Centre.

Posted by: Blog Administrator @ 19.27
Tags: i-DEPOT, BOIP,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA901

TUESDAY, 23 JUNE 2020
Mexico joins Hague System

Mexico deposited its instrument of accession to the Geneva Act with WIPO on 2 March 2020 and the country became the 64th member of the 1999 Geneva Act and 74th member of The Hague Union. This means that from June 6 applicants can designate Mexico in an international design application filed with WIPO or the home office, as Victor Garrido explains.

Preparing to ratify

Before ratification, a lot of work had to be done. Mexico acceded to the Geneva Act by ratifying two important international agreements: the CPTPP (Comprehensive and Progressive Agreement for the Trans-Pacific Partnership) in June 2018, and the USMCA (United States-Mexico-Canada Agreement) in 2019/20.

In parallel to finalizing these agreements, Mexico started to adapt its domestic law to incorporate the Geneva Act provisions. On 27 April 2018, an amendment to the law introduced several changes to the handling of industrial designs, including:

  • publication of industrial design applications, which formerly were published only at grant;
  • the definition of design novelty in terms of “independent creation” requiring that a design must be different to a “significant degree” from known designs or a combination of features of known designs;
  • the requirement to indicate the specific product to which a design is intended to be applied, instead of merely indicating a wide type of products;
  • modifying the term of protection of industrial design registrations from a non-extendable 15-year term to a renewable five-year term up to 25 years.

Additionally, a bill for enacting a new IP law is being discussed in Congress at the moment. If passed, the new law will probably maintain all or most of the provisions introduced in the 2018 amendment and consider further aspects concerning the Geneva Act and associated rules and regulations.  

Practicalities

When it comes to the practicalities, Mexico is requesting an Individual Fee for designation and renewal. It is important to keep in mind that the designation fee falls due in two parts – the first one at filing and the second one at acceptance.

The current Mexican law does not provide for deferment of publication. It is not expected that the law to be enacted will change this, despite the fact that deferment of publication is one of the most notable features of the Hague System.

Consequently, applicants intending to apply for deferment should consider this before designating Mexico in their international applications.

Mexico requires that an industrial design application refers to a single design or to a group of designs related to each other in such a manner that they conform a single design concept. This means that the examiner may request, through a refusal, that an international application is divided in order to comply with the unity requirement.

Currently, the criteria for evaluating this aspect is quite strict and gives little room for the inclusion of a plurality of designs in a single application. The new IP law will hopefully provide some guidance.

The maximum duration of an industrial design registration is 25 years counted from the international registration date.

Mexico requires that any design application be filed in the name of the design creator. However, a statement that the person identified as the applicant is the creator, or that the creator has assigned the application to the person identified as applicant, is acceptable to fulfil the special requirements.

Examination

Industrial design applications are subject to examination by the Mexican Office. The examination will include the following requirements: unity, novelty, clarity, correct design naming and valid claimed priority (if any).

If a refusal is issued, it must be notified to WIPO within 12 months from the publication date of the international registration. WIPO will inform the applicant of the refusal without delay and the response to the refusal must be submitted directly at the Mexican Office within two months with the possibility to extend for another two months. The applicant will need to appoint a Mexican representative to file the response.

With each new member, the Hague System becomes more attractive to brand owners, and Mexican companies will be sure to use the system when it fits with their business needs.

By Victor Garrido, Head of Patents at Dumont, a member of MARQUES.

Posted by: Blog Administrator @ 17.35
Tags: Hague, Mexico,Geneva Act,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA900

TUESDAY, 16 JUNE 2020
Israel Patent Office joins WIPO DAS for designs

The Israel Patent Office (ILPO) has published a Registrar's Notice stating that its Designs Department is joining the WIPO Digital Access Service (DAS) for industrial design applications, both as a depositing office and an accessing office, with effect from 1 July 2020.

The DAS is a service provided by WIPO allowing priority documents to be securely exchanged between participating IP offices.

As a depositing office, the ILPO will deposit certified copies of priority documents of design applications filed on and after 1 July 1 2020, and as an accessing office, it will retrieve priority documents available through the service for applications whose priority claim has not expired by 1 July 2020.

The ILPO is joining 11 offices that have already joined DAS, including the US Patent and Trademark Office, China National Intellectual Property Administration, Indian Patent Office, Japan Patent Office and Korean Intellectual Property Office.

By Sa’ar Alon, Partner and Head of the Designs Practice at Reinhold Cohn Group in Tel Aviv

Posted by: Blog Administrator @ 12.50
Tags: WIPO DAS, ILPO,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA899

THURSDAY, 11 JUNE 2020
Hague System webinars in June 2020

WIPO is hosting two free interactive webinars on the Hague System later this month, which may be of interest to Class 99 readers.

The first, “Protecting your Designs Internationally with the Hague System”, is on 18 June at 16.00 Geneva time. It will highlight the benefits of the Hague System and provide an introduction to online resources available, as well as showcasing the experiences of two Hague System users (a traditional company and a startup).

The second webinar, “Exploring the Hague System’s Online Resources”, is on 30 June at 16.00 Geneva time. It will focus on the Hague System online resources for preparing international applications and managing international registrations. It will also include a tour of the new WIPO IP Portal.

For more information visit the Hague System Webinars page on WIPO’s website.

Posted by: Blog Administrator @ 09.12
Tags: Hague System, WIPO, webinar,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA898

MONDAY, 8 JUNE 2020
Book review: Terrell on the Law of Patents

In the latest post from the MARQUES Education Team, Shane Smyth reviews the 19th edition of Terrell on the Law of Patents (published by Sweet & Maxwell, 22 May 2020, £405):

Reviewing a tome on patent law for the membership of MARQUES is not a task for the faint hearted but then again, this is no ordinary tome and sometimes even a diverse membership including a humble trade mark attorney (if you can find one) sometimes need a word to the wise.

I regularly find that my knowledge and experience in one area of IP law can be grafted onto a line of argument in another seemingly unrelated area of intellectual property. For example, the thorny issue of self-disclosure destroying novelty and the determination of whether a disclosure is in fact confidential is a relatively new issue before EUIPO in design matters.

However, there is a raft of established patent case law on this very issue and if you want to address this issue in a design matter, you can do no better than delve into the oracle that is Terrell.

In a similar vein, the expansive references to the principles and supportive case law on the rights afforded by prior use can be cross-fertilised from one sibling IP right to another. The way the explanation of principles is structured makes this cross-fertilisation seamless.

Epistemologists generally recognise four different sources of knowledge. If you are like me, then the trick is not so much what you instinctively know but where to look to acquire new or expand upon your existing knowledge.

When, as with Terrell, the knowledge can be achieved within the four corners of a single tome, that means a low carbon footprint in reaching your destination. This is the essence of why Terrell is now in its 19th edition. If you quote from Terrell, then you know you have the weight of authority on your side.

I have Terrell beside me when I am researching areas of design law which have similar principles to those pertaining to patent law. 

Shane Smyth is a partner of FRKelly and a member of the Education Team. This post is part of an occasional series of book reviews from the Team (see also this post on the Class 46 blog)

 

Posted by: Blog Administrator @ 09.32
Tags: Terrell, Education Team, book review,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA897

THURSDAY, 4 JUNE 2020
Webinars on mediation rules and WIPO PROOF

Readers may be interested in these webinars hosted by WIPO later this month.

WIPO Mediation Rules

The WIPO Arbitration and Mediation Center is holding two webinars on how to use mediation under the WIPO Rules.

When parties agree to submit a dispute to WIPO mediation, they adopt the WIPO Mediation Rules, which provide a procedural framework.

The webinars will focus on how to use mediation under the WIPO Rules to resolve IP and technology disputes.

They take place on 16 June 2020 from 10.00am to 11:00 am CEST and 5:00 pm to 6:00 pm CEST. You can register for either webinar using this link to join them live or receive the recording.

Discover WIPO PROOF

As recently shared on the Class 46 blog, WIPO has launched a digital fingerprint service called WIPO PROOF. It provides a way to safeguard creations at every step of the process. For a small fee, users can obtain a WIPO PROOF token which can be used to establish prior existence and possession.

WIPO is hosting two webinars titled “Discover WIPO PROOF”. The first is on 24 June at 9:00 am CEST and the second is on 25 June at 5:00 pm CEST.

Each of these webinars will comprise a 25-minute presentation followed by 20 minutes of Q&A. Registration enables you to take part in the live webinar and access the recording.

All the webinars are free of charge.

Posted by: Blog Administrator @ 09.58
Tags: mediation, WIPO PROOF, WIPO,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA896

FRIDAY, 29 MAY 2020
How to apply for an industrial design in Russia

Olga Plyasunova provides a practical guide to Russia’s industrial design system.

Article 1352 of the Civil Code of the Russian Federation “Conditions of Patentability of an Industrial Design” contains a definition of this object of intellectual property, and also lists the requirements that it must meet in order to obtain legal protection in Russia.

If the owner of the result of creative work wants to patent the object and considers it relevant to the conditions of patentability, then in order to obtain an official title of protection, it is necessary to contact the Federal Service for Intellectual Property.

There are two ways to apply for registration of an industrial design:

• traditional

• electronic

How to choose an application method

Electronic filing page

Before proceeding to the advantages of various methods of applying to Rospatent, it is worth noting that regardless of how the patent office receives an application for legal protection, the package of documents that must be provided is the same.

In general, both the electronic and traditional methods lead to the same legal result: the Federal Service for Intellectual Property receives an appeal from a person to provide a title of protection in respect to the claimed intellectual property.

However, due to the fact that the electronic application is submitted via the internet and by remote access, this method has several advantages:

• With electronic filing, the amount of the fee paid for conducting a formal examination and substantive verification of the designation and other legally significant actions is reduced.

• The applicant saves time, since there is no need to personally be present in the building of Rospatent, and further correspondence with the department’s specialists is carried out in an online format.

• The website operates 24/7, therefore you can send an application at your convenience.

Registration certificate

The owner of an industrial design can submit documents in digital format using the FIPS website or the Internet portal of “Gosuslugi” (state services).

Among the advantages of applying directly to Rospatent, one can note personal communication with employees of the Patent Office and receiving a printed copy of a document certifying the receipt of an application for registration of an industrial design.

If the applicant has chosen the traditional filing method, it is necessary to contact the address of the Federal Service for Intellectual Property: Moscow, Berezhkovskaya nab., 30, bldg. 1.

Documents required to apply for registration of an industrial design

Rospatent’s website has a section dedicated to industrial designs, containing a list of documents required to apply for registration. The applicant must submit:

1. Application for a patent.

2. A set of images.

3. A drawing of the general appearance of the product, if necessary to reveal the essence of the industrial design.

4. Description of the industrial design.

5. Document on the payment of the state duty.

The specified list is due to the following: department specialists are asked to send documents that will allow them to receive complete and clear information on the result of intellectual activity in order to fully conduct an examination before deciding whether to register an object or refuse it.

In addition to the information on the result of intellectual activity, the application contains important information about the applicant, which will allow Rospatent experts to contact the applicant if necessary.

The documents listed in paragraphs 2-4 relate to the description of the industrial design and are crucial, since with their help the object is determined to meet the conditions of patentability.

The document on the payment of state duty confirms the fact of payment for the examination procedure.

It is worth noting that the first step after receiving and registering an application is a formal examination. Namely: the analysis of documents regarding the completeness of their presentation, the correctness of filling and the correctness of the data. As practice shows, such a state of affairs is not accidental: in this way, the experts of Rospatent save time of the department and applicants by immediately checking the accuracy of the information, which subsequently can play a decisive role for the examination.

In conclusion, I want to note that the holder of the result of intellectual activity has the right to submit an application not only personally, but also with the help of a patent attorney who will help to understand the details and nuances of the procedure, as well as suggest the best solution in case of difficulties.

Olga Plyasunova, Zuykov and Partners, is a member of the MARQUES Dispute Resolution Team

Posted by: Blog Administrator @ 11.20
Tags: Rospatent, Russia, ,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA895

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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