As of today the intellectual property
rights protection is not a luxury
but stern necessity

 
» » » Usage of graphic techniques to extend the scope of legal protection of industrial designs
на правах рекламы

Usage of graphic techniques to extend the scope of legal protection of industrial designs


V.V. Mordvinova
Russian Patent Attorney
Saint-Petersburg

 




Lately, more and more often, dotted lines have appeared in images of patented industrial designs. The share of such patents has reached about 10%, at that, the leaders of such depiction of industrial designs are applicants from US, IT, KR, SE, FI. Predominantly, patents have been issued for such objects as "Graphical interface". So, the company SAMSUNG ELECTRONICS CO., LTD (KR) regularly patented industrial designs wherein dotted lines were used in the images for visual binding of graphic elements (menus, buttons, icons, lists, etc.) to mobile devices (patents Nos. 91034 - 91045). The user interface elements made in the form of various graphic images and arranged in a certain order within the mobile device display received legal protection as industrial designs. See the patents Nos. 91039, 92181 and 92396 (on the illustration).

 

 

 

After introduction of the amendments into the Civil Code of the Russian Federation in 2014 (the federal law No. 35-FZ of March 12, 2014), in particular, cancellation the list of essential features of industrial designs it was required a sort of replacement of this list in order to visually identify and emphasize the portion of the design, for protection of which portion the applicant claimed. It is clear that it could be stressed with color or contour, and the rest portion for which the applicant does not claim could be marked with dotted lines, especially taking into account that pursuant to point 32 of the Requirements to the documents for granting of industrial designs patents such an opportunity is stipulated.


In April 2018 during the seminar "Accession of the Russian Federation to the industrial designs international registration Hague System” organized jointly by WIPO and the Russian Patent Office, there was a confirmation of this thought in the speech of the Moscow colleague A.K. Vasilets: "In the absence of an opportunity to characterize the peculiarities of the claimed solution with words, the applicant uses a graphical approach for emphasizing the essential features".


In a number of cases using of dotted lines makes it possible to expand legal protection provided within an industrial design patent. When comparing a patented industrial design with a specific product having similar purpose, for proving use of the industrial design it is necessary that the product contains all the essential features of the industrial design and makes the same general impression on an informed consumer as the patented industrial design (par. 2, art. 1358 of the Russian Civil Code). In case of using dotted lines on the images, on Vasilets’ opinion, "for ascertainment if a patent is infringed it is necessary to compare solid lines. Dotted lines are not taken into account. This means that the less solid lines or the more dotted lines, the stronger is the patent". It is a sort of claims of an invention! Here is the strength of dotted lines!


There is a reason to believe that this graphic approach will help both judges and judicial experts, since when considering disputes about patents infringement visual information about protected features of industrial designs is more visible and, therefore, more comprehensible.


In addition, during examination of an industrial design application, the Russian Patent Office experts will no longer be able to say that the distinctive features "are insignificant in general visual perception of an article or that they are not expressive enough and do not stand out against the general context and are nuanced".


No designer wants his work to look like a cliche, so he aims to stand out among competitors, but after all, design ideas are not born in vacuum - they are usually borrowed and modified. There are many examples of such borrowing. It is obvious that designers wish to save exclusive rights with concern to these recognizable ideas as long as possible.


For comparing of the scope of patent protection we give as an example 3 Russian patents (Nos. 108045, 108044 and 107018) of one patent holder (Fiskars Finnland Oy Ab, FI) for the industrial design "Handle for a garden tool," one of which is "dotted".


Which one of these patents is stronger and why?


It can be assumed that if a spade as whole article is chosen as an object of patenting, the peculiarities of the side portion of the handle the Russian Patent Office experts would consider insignificant features (see the illustration).


 

 

 

On the other hand, if the appearance of the D-shaped handles is chosen as an object of patenting (patents Nos. 108044 and 108045) experts would compare only the appearance of the shape of the handles.


Finally, when the appearance of the side portion of the handle is chosen as an object of patenting (patent No. 107018), the applicant narrowed down to the limit the claims but, thereby, ensured protection of the exclusive rights in a larger scope, since this scope is determined with a set of essential features that are reflected in the images of the article contained in an industrial design patent.


Until recent times the graphic approach with using dotted lines in images of industrial designs was not clear for Russian applicants, but now it is used more often.


The task of patent attorneys is to show the applicants the strategic advantage of this graphic approach which can be used in different design solutions - from printed products to industrial products. As now an applicant himself chooses the degree of detalization, so when submitting a design application it is worth to focus on the most advantageous and original parts of the article and to advise the applicant the best way of arranging graphic materials.

 

If to look through the old applications and ask a question - could we declare these objects in other way, using dotted lines - the answer is clear – we could, and this concerns desktops, bottles, furniture, packaging, building facades and graphical interface. In each of these objects it is possible to single out a certain design dominant, for the sake of which dominant the design solution is patented. In case if a small part of an original shape is claimed then using of dotted line does not seem to make much sense, but if it's a large object, for example an automobile, then emphasizing of a new and original part is expediently, especially because in this case It does not matter how the rest of the parts are done. You can refer to the patent No. 105593 as an example.

 

 

As can be seen, using of the described graphic technique can be quite effective for expanding of the scope of legal protection of an industrial design patent and we can expect that law enforcement practice will confirm this conclusion in the near future.


It is clear that much depends on a patent attorney’s experience – an application can be filed only for sake of obtaining a patent, and it is possible to file an application so that the patent will not only protects the new design elaboration but to make this protection the widest possible.


The considered graphical method makes us return to the issue of the quality of graphic materials submitted for registration of industrial designs. Today, when the wording of an industrial design in the form of a list of its essential features has been cancelled, it becomes of paramount importance.




St. Petersburg collegial readings - 2018


Collection of reports of scientific-practical conference

(St. Petersburg, 27-29 June 2018)


This text is published solely for the purpose of promoting and educating on intellectual property rights. The main purpose of the publication is to familiarize people with the basics of protection of intellectual property rights and to stimulate interest in this topic.

OUR ADDRESS: st. Pochtovaya house 11А building 6, Fedorovskoe Urban Settlement
                             Tosnensky District, Leningrad Region, 187021
PHONES:   +7 (953) 170 8526 ;    +7 (952) 287 1680
OGRN 318470400039914 ;    ITN 470311977965
 

Production and support
of this site is carried out
Alexey Nikolev IS.
Провайдер: