The Design Law Treaty and the Struggle for International Harmonization of Industrial Design Protection

By Dennis crouch

The international IP community is moving toward further harmonizing legal protection for industrial designs. For almost twenty years, member states of the World Intellectual Property Organization (WIPO) have been negotiating a Design Law Treaty (DLT) that would streamline and align procedural requirements for obtaining registered design rights across jurisdictions. If successful, the DLT would make it “significantly easier for small and medium-sized enterprises to obtain industrial design protection overseas as a result of simplified, streamlined and aligned procedures and requirements.”[1]  The DLT can be seen as parallel to the Patent Law Treaty (PLT) adopted in 2000 that helped to harmonize and standardize the formal patent procedures such as the filing requirements sufficient for obtaining a filing date.

Throughout this time, it has been difficult to implement almost any global IP treaty because of major north-south divides.  For the DLT, negotiations have been stalled for the past several years over an African Group proposal that would permit countries to require design applicants to disclose the origin of traditional knowledge, cultural expressions and genetic resources used in creating protectable designs.[2] This same issue has arisen in other IP treaty negotiations over the past few decades.[3] A diplomatic conference is now scheduled for late 2024 to finalize the treaty, but it remains to be seen whether WIPO members be able to reach a consensus. The USPTO is currently soliciting public input to help formulate the U.S. negotiating position.

About the Design Law Treaty:

At its core, the DLT aims to simplify and harmonize the procedural requirements for obtaining registered industrial design rights across national and regional intellectual property (IP) offices.  In the US, these are design patent rights.  The DLT is intended to benefit designers seeking multinational protection for their designs by reducing discrepancies between jurisdictions’ filing requirements and associated costs and complications.

 Key provisions include:

• Standardizing elements that can be required in a design application (Draft Articles 3 & 4)
• Providing relief measures if application time limits are missed (Draft Articles 12 & 13)
• Allowing correction/addition of priority claims post-filing (Draft Article 14)
• Limiting representation requirements before offices (Draft Article 4)
• Providing a grace period for pre-filing disclosures (Draft Article 6)
• Limiting refusal grounds and invalidation of registrations (Draft Articles 18, 19, 21)

Proponents argue this “formalities treaty” would particularly benefit small entities and those in developing countries, who currently face significant hurdles protecting designs abroad due to inconsistent and burdensome procedural requirements. By establishing a ceiling on what countries can require, the DLT constrains national flexibility, but also ensures applicants “maximum predictability and simplicity of procedures.”

Several years ago, the US implemented the Hague Agreement Concerning the International Registration of Industrial Designs (Hague System).  Both the proposed DLT and the Hague System deal with industrial design protection (including design patents), but they serve different purposes and have distinct scopes.

The Hague System, also administered by WIPO, is an international registration system that allows design owners to seek protection for their designs in multiple nations through a single international application filed with WIPO. It simplifies the process of obtaining and maintaining industrial design protection internationally by enabling applicants to secure protection in any of the Hague System’s contracting parties through a single application, in one language, and with one set of fees. The Hague System has been operational since 1925 and currently has 77 contracting parties, although the United States only implemented the system in 2015.

In contrast, the proposed DLT is a harmonization treaty that aims to streamline and align the procedural requirements for obtaining industrial design protection at the national level. The DLT would set a maximum set of requirements that contracting parties can impose on design applicants, reducing differences in national and regional design registration procedures.

For utility patent experts, it may make sense to think about the relationship between the Hague and DLT as similar to that between the PCT and PLT in that one set (Hague and PCT) provides a framework for centralized applications and preliminary assessments at an international level, while the other set (DLT and PLT) focuses on harmonizing procedural requirements across jurisdictions at the national stage to streamline the application process nationally.

The African Group Disclosure Proposal: Preventing Cultural Misappropriation

The DLT has proved difficult to conclude, largely due to a 2014 proposal by the African Group that would permit countries to ask design applicants “disclose the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design.”  Opponents countered that such a disclosure requirement was inappropriate for a formalities treaty, would inject legal uncertainty into the design system, and was irrelevant to a design’s ornamentality and registrability. A settlement may be likely that permits nations to have heightened disclosure requirements, but without the treaty mentioning what Professor Margo Bagley calls the “Forbidden Words” of traditional knowledge, cultural expressions, or genetic resources. (Cite below)

Other Hurdles to Finalizing the DLT

While the disclosure requirement remains the biggest point of contention, other thorny issues could still trip up the diplomatic conference, such as:

• Technical assistance responsibilities and funding for implementation (Draft Article 22)
• Whether to include mandatory Model International Forms (Draft Article 23)
• To what extent to allow substantive examination of designs beyond formalities (Draft Articles 1bis, 5, 16, 17)
• Terms of joining the treaty and domestic implementation flexibility (Draft Articles 26-31)

Public Input on the Design Law Treaty to the USPTO

As I mentioned above, the USPTO is soliciting public comments to inform the U.S. negotiating position at the upcoming diplomatic conference in November 2024.  The agency is open to all comments, and has particularly identified a few issues:

1. Experiences with foreign design protection and challenges faced due to inconsistent formality requirements across jurisdictions.
2. Views on the current draft DLT articles and regulations, including suggestions for additions, deletions or modifications.
3. Experiences with disclosure requirements related to traditional knowledge, cultural expressions or genetic resources in other countries and the impact on applicants.
4. Perspectives on whether a disclosure requirement should be included in the DLT and potential effects on harmonization goals and applicants.
5. Thoughts on remaining open issues like technical assistance, model forms, scope of examination, and treaty implementation flexibilities.

The USPTO notice is particularly interested in hearing from actual design applicants and practitioners about the practical impact of the DLT’s provisions.  Interested parties can submit comments online through the Federal eRulemaking Portal at www.regulations.gov by searching for the docket number PTO-C-2024-0008. The deadline to submit written comments is June 25, 2024.

Lets see some Color: Although I have not fully contemplated the details of the proposed DLT, I believe that it would not require any changes to US patent law.  One change in USPTO practice will be that the drawings / photographs may be in color “at the option of the applicant.”  Currently, the PTO only permits color in the drawings based upon a petition with a showing as to why why the color drawings or photographs are necessary.  In addition, the drawings rules in the DLT would permit a combination of photograph and drawing. It is not clear whether this rule is meant to include photographs that have been drawn-upon.  Most design patent applicants include multiple views of the design. DLT makes clear that “the industrial design may, at the option of the applicant, be represented by one view that fully discloses the industrial design, or by several different views that fully disclose the industrial design.”

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[1] WIPO Diplomatic Conference on the Design Law Treaty, 89 Fed. Reg. 21242 (Mar. 27, 2024).

[2] WIPO Industrial Design Law and Practice – Draft Articles, art. 3(1)(a)(ix), WIPO Doc. SCT/35/2.

[3] See Margo A. Bagley, The Draft Design Law Treaty’s Forbidden Words, in DESIGN LAW: GLOBAL LAW AND PRACTICE, pt. B (Dana Beldiman ed. 2024); “Ask Me No Questions”: The Struggle for Disclosure of Cultural and Genetic Resource Utilization in Design Applications, 20 Vand. J. Ent. & Tech. L. 975 (2018).