Law Deals a Blow to the List of Features¹ 106 (2015)
Patents for inventions push forward the technological progress but are not usually seen to the naked eye. Industrial designs strike the eye of the consumer and push forward his demand. A famous Mark Twain saying «Clothes Make the Man» mutatis mutandis fits the design: The outer appearance makes the industrial design. Until late last year filing a design application was a headache for the applicant because Russia, as in other areas, pursued its own way. In order to file an application it was necessary to compile a list of essential features by analogy with applications for invention even though the pictures were all the same there. The list of essential features played a key role in defining the scope of protection of a design. It is true that the list of essential features could be corrected before the patent was granted however if it was granted without describing a particular important feature this could become a problem on the market. The infringer could avoid being chased if he deliberately omitted one of the features given in the list of essential features or if a particular essential feature was added in the list without need.
The new law dismissed the list of essential features which move understandably expands the scope of protection. The law now provides that an industrial design is used in the product if the product is characterized by essential features which produce the same impression on the informed user as the impression produced by a patented industrial design on condition that both products serve the same purpose. The provision has become less «mathematical» but more «humane». The accent has been shifted to expert evaluation rather than to formal listing of features. The absence of one or several features in a design or some difference in the embodiment of a design will not take the design out of protection on condition that the design produces the same impression on the informed user as the patented industrial design. On the other hand, the absence of the list of essential features may complicate solution of the disputes on patentability or infringement. The body considering the dispute will be guided by pictures only and there will be a wider scope for the parties to argue which of the features is «more essential if at all» in the contested industrial design and the one which is compared to it. The law introduced the concept of a hypothetical «informed user» who will judge upon originality of the patented design and compare it to the allegedly counterfeit article. The «informed user» has come to Russia from Europe so patterns of his behavior may possibly influence the Russian judiciary and the Patent Office. Anyway some time should pass until the informed user is naturalized in Russia. Until then the Patent Office and the parties in dispute will have more leeway to assess what is to be considered as essential features of the design while on the other hand, there will be some uncertainty as to what particular specific features are essential in considering the difference between the industrial design and the one which is cited or considered as infringing the rights.
The description of the industrial design remains essential for the patent application. The law does not set requirements for the description. There exist earlier rules drafted by the Patent Office which explain that the description of the industrial design should disclose the essence of the design through description of its essential features and particulars of its outer appearance. The new rules have not yet been adopted however there are drafts from which we may infer that the Patent Office would like to have a detailed description of the industrial design. Neither the law nor judicial practice, which is yet
The documents needed to establish priority are less in number. The applicant has to submit only a set of pictures which give a clear and complete understanding of essential features of the industrial design which define its aesthetic quality. Description of the industrial design may be submitted later.
The list of
Requirements for making changes in the application have become more stringent. The applicant may submit changes only in response to examiner’s inquiry. The changes should not add or delete essential features present or absent in the originally filed documents. The applicant should carefully prepare the images of the industrial design. No changes will be possible after filing.
A number of changes in the law affect the examination procedure. While evaluating novelty and originality of the claimed design the examiner may cite information on the outer appearance of similar articles not only contained in the earlier filed patent applications for industrial designs but also in the patent applications for inventions, utility models, and trademarks. It so happens that patent applications for whatever subject matters may contain drawings or pictures which show the outer appearance of the patented article in which an invention or a utility model is used. Likewise, a trademark application may concern a 3D mark or a trademark for a label. The outer appearance of such articles may be protected by a patent or a trademark. It goes without saying that all publicly available information may also be cited which raises questions with regard to novelty and originality. In fact the scope of information which may be cited has been substantially enlarged.
A grace period has been extended. It was previously six months. Now it has been doubled. This new provision is obviously to the advantage of the applicants. In the first place, accidental disclosure gives more opportunities to the applicant to rectify the situation by filing an application within a longer span of time. Besides, the designer, prior to filing a patent application may wish to test his design on the market, evaluate its commercial potential and choose to file it in Russia if he sees that the design sells well in his home country.
It is worth noting that the above and some other changes in the law were conditioned by the intention of the law makers and the Patent Office to harmonize protection of the designs with the regulation prevalent in the European Union. Though, in some cases those attempts were not consistent enough: the description of the industrial design has been retained in the patent application though, as has been mentioned above, it does not have critical importance and is not a requirement in the countries of the European Union. Also, rigid requirements to limit opportunities for introducing changes in the application in the European Union were explained by excessive workload of the European Patent Office while the number of design patent applications in Russia is not yet commensurate with the European Patent Office which would warrant introduction of such requirement.
There is yet another amendment of the law which concerns the term of validity. The old law provided that a patent for an industrial design could be granted for 15 years. That term of validity could be extended by another term at the choice of the patent owner but not exceeding 10 years. The amendments introduced a shortened basic term of validity of 5 years with the possibility of multiple extensions by 5 year periods. The overall term of validity remains 25 years. It is not clear why such changes have been made all the more that annual fees should have been paid every year under the old law as well as they should be paid annually under the current law.
The law introduced a limitation of the rights of the patent owner in what concerns assignment of rights. A new provision sets forth that the exclusive right for an industrial design shall not be assigned if the assignment may confuse the consumer with regard to the goods or their manufacturers. If the patent owner issues an exclusive license to a licensee he will not be able to use the industrial design himself in the scope provided in the exclusive license. If the patent owner plans to use his patent himself he should include a relevant provision in that exclusive license agreement.
Summarizing the above review of amendments of the law pertaining to industrial designs it should be noted that the law has become more friendly to the applicants and patent owners and more attractive for filings. This responds to the trend consisting in that modern consumers have become more demanding to the appearance of the goods they buy. As time goes by the Patent Office and judiciary will accumulate practice and it will become clear whether the law has to be improved further.