FRYER INSTITUTE ON INTELLECTUAL PROPERTY LAW*

WELCOME TO A HOME PAGE SET UP TO PROVIDE CURRENT INFORMATION ON INTELLECTUAL PROPERTY DEVELOPMENTS - INITIALLY ON THE SUBJECT OF INDUSTRIAL DESIGN PROTECTION LAW AND PRACTICE ON AN INTERNATIONAL LEVEL.

WEB SITE FEATURES:

(New)  Fryer Institute Newsletter No. 8, June 28, 2008.

1.  Introduction
2.  Product part replacement -- Legislation and debate:  Is there utility patent or design patent infringement  when a product is repaired?
3.  U. S. Senate held hearing on product piracy
4.  U. S. PTO 2008 Design Patent Day reports
5.  Major pending U. S. appellant court case reviewing U. S. design patent infringement law
5.  U. S. Senate ratifies the Geneva Act of the Hague Agreement -- Next Step is implementation.
6.  Recent U. S. PTO design patent statistics analysis
7.  Trend continues in adopting market entry design protection
8.  Recent WIPO book on how to teach IP law includes industrial design law.

Link to Fryer Institute Newsletter No. 8, June 28, 2008

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(New) (Updated -- June 28, 2008)   GENEVA ACT INFORMATION CENTER

See Newsletter No. 8, June 28, 2008, for update

The Geneva Act of the Hague Agreement Concerning the Internation Registration of Industrial Designs (Geneva Act) is a treaty that provides international protection of industrial designs (design patents in the U.S), similar to the Patent Cooperation Treaty for utility patents and the Madrid Protocol for trademarks.  At the beginning the Geneva Act Information Center will focus on United States steps to ratify the Geneva Act of the Hague Agreement treaty.  This feature will help United States companies that are participating in the United States ratification process.  The Information Center will include the features, summarized below.

Summary of Center contents:
1.  (Updated June 28, 2007) Status of United States ratification effort:  U. S. ratified Geneva Act of the Hague Agreement.  Next step is to implement the treaty by enacting necessary patent law changes and approving PTO rule changes -- See Newsletter No. 8 for updates and more details;
2.  Introduction to the United States treaty ratification process;
3.  Explanation of how United States companies can participate in the Geneva Act ratification process, including whom to contact to submit your comments ;
4.  Current list of the Geneva Act members (See Newsletter No. 8);
5.  Summary of benefits from foreign design protection;
6.  Introduction to the Geneva Act of the Hague Agreement:  by William T. Fryer, III, article titled: A NEW WAY for United States Design Owners to Obtain Foreign Design Protection (Concepts and Glossary of the Geneva Act) (2006).
7.  President Bush's letter forwarding the Geneva Act treaty to the U.S. Senate for ratification, and the State Department recomemdations letter.  The State Department letter has an indepth analysis of key features of the Geneva Act.  It is an excellent further introduction to how the treaty works.

This Information Center will be updated as significant new developments occur, or when more complete information is received.  Updates, comments and questions about the Geneva Act of the Hague Agreement, in connection with the United States ratification process, are welcomed -- Please send them to the web site editor, Professor Fryer, at E-mail:  fryer@fryer.com

Click here for acess to the Geneva Act Information Center Index:  Geneva Act of the Hague Agreement (Industrial Design Protection treaty) Information Center-- .

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Announcement: Publication of a book on the Geneva Act (1999), published by Kluwer Law International, written by William T. Fryer, III, on the drafting history and operation of the treaty. Details are on the linked page.
 
 

Fryer Institute Newsletter No. 7, March 9, 2005.  The reason for the gap in updating the web site is explained partially by the above announcement.   This newsletter reports on the status of the Geneva Act of the Hague Agreement accessions,  FICPI Rome Designs Symposium held in 2001 and the WIPO 2004 Venice International Conference on Designs.  Guidance is given on how to access important publications from these conferences.   The U. S. Design Patent Database has been updated to March 6, 2005.  This feature started with the last newsletter, with guidance on how to located the text of U. S. design patent cases on the internet.  Several important cases are analyzed briefly.  An update on the U.S. Vessel Hull Design protection Act is provided, including a review of the report on a five year review by the U. S. government on the Act's operation.

Status of Geneva Act (1999).  The Geneva Act of the Hague Agreement is now operational, and several more countries have acceded to the Act.  The effort continues to generate more interest in membership, to make this treaty the foundation for global design protection.  Details on recent accessions and progress in future accessions are on the linked page.

FICPI 6th Open Forum, November 14-17, 2001, Designs Symposium, Rome, Italy.  There was a major international conference held by FICPI and selected papers from this conference were published by the University of Baltimore, Intellectual Property Journal. The details on how to obtain copies of the Journal issue with these publications is in the linked document.

WIPO International Conference on Designs, May 13-14, 2004, Venice, Italy.   A major conference on international design protection stimulated interest in the Geneva Act and provided a wealth of information on national and international design protection.  Several papers have been published on the Internet by WIPO, providing extensive information on national impact of industrial design, design protection laws, and how to develop a multi-countries design protection program. Details on the Conference and how to access the papers are in the linked document.

U.S. Vessel Hull Design Protection Act.  Several documents on this web site related to the early stages of the Vessel Hull Design Protection Act (VHDPA), a unique form of protection aimed at piracy.  The VHDPA is very similar to the European Union Community Design Regulation, with an initial period of protection against copying without registration and subsequent registration to continue protection.  The effect of the VHDPA was reviewed by the U. S. Copyright Office and the U. S. Patent and Trademark Office, recently, and the final report on this review was issued in November 2003.  The report concluded that there was not enough time to determine the effect of this law on the boating industry. Comments on the hearing and the final report are in the linked document.

U.S. Design Patent Database Updated to February 16, 2005) A new feature of this web site is to provide access to recent U. S. design patent cases.  The resource should be especially useful to researchers and practitioners who do not have access to a library with U. S. case law.  The present database lists current cases going back five years.  The database is organized in chronological order, with the most recent case listed first.  A reference to the U.S. Patent Quarterly (BNA) citation is provided.  Instructions are provided on how to locate the cases on the Internet.  While every effort will be made to keep the database relatively up to date, persons working on a legal issue should consult an attorney for the latest information.

FRYER CURRICULUM VITAE (As of December 8, 2007).    A detailed curriculum vitae for Professor Fryer is provided with his work experience, professional activities and cites to selected published articles.

FRYER Newsletter No. 6, June 5, 2003.  This newsletter introduces a new, regular feature of the web site:  a database on recent U. S. design patent cases, with instructions on how to locate the cases on the Internet.  Also the newsletter includes news on several important industrial design protection developments, including the new design treaty (Geneva Act) Global Implementation, and the review process now underway for the Vessel Hull Design Protection Act.  Finally, the newsletter introduces resources now available on the European Community (EU) Design, the new regulation that will provide EU wide design protection.  This feature will be updated as new Community Design resources become available.

 Recent U. S. Design Patents Database --  (last updated June 5, 2003.  A new feature of this web site is to provide access to recent U. S. design patent cases.  The resource should be especially useful to researchers and practitioners who do not have access to a library with U. S. case law.  The present database lists current cases going back five years.  The database is organized in chronological order, with the most recent case listed first.  A reference to the U.S. Patent Quarterly (BNA) citation is provided.  Instructions are provided on how to locate the cases on the Internet.
While every effort will be made to keep the database relatively up to date, persons working on a legal issue should consult an attorney for the latest information.

Introduction to EU Community Design Resources -- A periodically updated feature (last update June 5, 2003).  The new EU Community Design Regulation is operational, both the unregistered protection against copying upon market entry, and the registration part, for longer and more effective protection.  The purpose of this report is to introduce resources related to the Community design and provide an analysis on their effectiveness and how to use them.  The first review focuses mainly on the EU Office of Trademark and Designs web site resources.  The EU Community Design already has had a major impact on development of industrial design laws.  Its effect can be seen in the countries that desire EU membership.  The importance of unregistered design protection, providing market entry protection against copying, follows a trend that will continue.

Professor Fryer's testimony on review of the Vessel Hull Design Protection Act --  March 18, 2003.  The Copyright Office and the Patent and Trademark Office initiated their review, mandated by Congress, of the Vessel Hull Design Protection Act (see other documents on this web site on the early history of this Act).  In general, the hearing held on March 18, 2003, showed support for continuing the law.  There was general agreement that the registration procedures needed updating, to make the registration more effective and easier to prepare.

 Update on the Global Implementation of the Geneva Act Industrial Design Treaty.  The Global implementation of the Geneva Act on industrial designs will occur soon, may be this summer, or in the early fall, but the U. S. will not be a member based on the present level of effort being put forth to obtain ratification.  There has been no priority by the U. S. PTO given to the ratification task.  It is time to press the PTO administration, Congressional  staffs and others to take action.  The U. S. needs to be a member of this treaty, to function effectively in the international business community.  The high interest in utility patents, both domestically and internationally, should not force the design owners off the playing field of international competition.

Utility patents are not the only answer to product market success.  Product appearance contributes significantly to sales a and attracts copiers.  Software and movies are not the only product being pirated.  Most countries recognize this fact and many are noted for their attractive and useful products that are effectively protected.

The fact that several recent, successful litigation cases have involved both utility patents and design patents suggests that design patent protection is an essential partner to product market success.  Think about whether your business or client wants to use the separate filing in each country, with attorneys in each country just to file, and the multiple languages and currencies involved.  The Patent Cooperation Treaty solved these problems for utility patents and U. S. technology businesses.  The Madrid Protocol solved these problems for the U. S. business  with trademarks involved in international trade.   What level of argument is need to make the case for design protection.  The case has been made, and it is time to get busy and have the U. S. ratify the Geneva Act on Industrial Designs promptly.   If more information is needed on this opportunity, please feel free to contact Professor Fryer.

FRYER Newsletter No. 5, April 11, 2002.  This newsletter reports on several major developments related to industrial design protection, including the status of U. S. ratification of the Geneva Act (new design treaty), the EU commencement of the unregistered protection part of their Community Design Regulation system.  In addition, there is a global review of trademark-product configuration protection, and a research report on how to locate statistics on design patents and registration in the U. S. and other countries.

FRYER PAPER: Trademark Product Appearance Features, United States and Foreign Protection Evolution:  A need for Clarification and Harmonization, published in the John Marshal Law Review, Vol. 34, No. 4, Summer 2001, 947-971.
This article analyzes the effect of recent U. S. Supreme Court cases on U. S. trademark product configuration protection, comparing these developments with the EU protection.

EU Community Design Regulation has been approved and the unregistered design protection part is now in operation.

(New -- June 28, 2008) U.S. PTO and WIPO Global Design Patent Statistics and Analysis.  Statistics on design patents and registrations are available on the U. S. PTO and WIPO web sites.  This data can be used in national and international economic analysis.  See Newsletter No. 8, June 28, 2008,  for update.

Fryer Newsletter No. 4, October 16, 2000.  This Newsletter features announcement of a U. S. PTO Design Conference, a status report on the New Act of the Hague Agreement (Industrial Designs) ratification by the U. S., and several major developments on U. S. trade dress  law.  The trade dress report includes an analysis (mini paper) on current U. S. law and a comparative review of with foreign laws.  In addition, a recent change in the Vessel Hull Design Protection Act and its status of use are reported, along with the status of the EU Community Design System (Regulation).

SUCCESSFUL CONCLUSION OF NEW DESIGN TREATY. A Diplomatic Conference on the New Act of the Hague Agreement Concerning the International Deposit of Industrial Designs (New Act) was concluded on July 6, 1999. Many countries, including the U. S, signed the New Act. It provided for a World Intellectual Property Organization (WIPO) administered central filing system for design patent applications in member countries and regional entities. A detailed report and analysis on the history and features of the New Act are provided on this web site.  Newsletter No. 4 has an update on this topic.

(Unique)  Web Power Point Presentation in Support of Ratification of the New Act of the Hague Agreement -- History, Features and Practice.  For users of Microsoft Power Point 97 and above, the presentation can be viewed by clicking on the link.  This step will download the file and open it in your computer. You can copy it and make presents using this file, for educational purposes.

Fryer Newsletter No. 3, January 5, 1999. This Newsletter features several important, recent developments around the world in design protection. Reports and resource materials are provided on the new European Union Design Directive, the new U.S. Vessel Hull Design Protection Act. The latest edition of Chapter 1500 on Design Patents, U. S. Patent and Trademark Office Manual of Patent examining Procedures, is included. This Chapter incorporates the recent rule changes discussed in the last newsletter. The Diplomatic conference on the Revised Design Treaty has been set for 1999. The Country and Regional Design Protection Information List has a new item on Australian Design Registrations and related statutes and regulation. Other special features are on: the WIPO Intellectual Property Library, U. S. PTO Web Site Adds Page with Answers to Frequently Asked Questions on Design Patent Applications, and New CD-ROM WIPO Designs Bulletin Publication.

Vessel Hull Design Protection Act was enacted on October 28, 1998. It provides protection against copying the shape of boat hulls and decks when they are introduced into the market, before any registration application is filed. This type of protection was the subject of earlier legislation for a broad group of products. There is an opportunity now to evaluate the effectiveness of this type of legislation. The law is scheduled to sunset in two years, with requirement that an evaluation report be completed by then. An introductory report and resources related to this legislation are provided on this web site for studying the new law.  Newsletter No. 4 has an update on this topic.

European Union Design Directive. European Union (EU) has published the long awaited Design Directive that will harmonize significantly the design laws of its members. The spare parts issue that delayed approval was not resolved, but a plan to work out the details was set up. An introductory report on the Design Directive , including the Directive text are on this web site. In the near future the EU Community Design System should be approved, and in operation at the EU office in Alicante, Spain.  Newsletter No. 4 has an update on this topic.

(A more recent MPEP edition has been published - See USPTO web site - site index)  U.S. Patent and Trademark Office Manual of Examining Procedure (MPEP), Revision 1, published February 2000 (7th Edition), Chapter 1500 on Design Patents is now available on the PTO web site under the Patent heading. These guidelines are very helpful in preparing and prosecuting design patent applications. The most recent Patent and Trademark Office rule changes (discussed elsewhere on this web site) are incorporated in this version. A brief introduction to these guidelines can be found in the commentary of U.S. Design Patent Special Statutes on this site.

Item Added on Australian Design -Registration in Country and Regional Industrial Design Protection Feature. This feature provides information on selected articles and other resources on design protection, organized by country and region. The latest addition is a very useful summary on the Australian design registration and the full text of the Designs Act and Designs Regulations with some updated information. The documents are on the Australian Patent Office web site [link to my page on Australia].

Answers to Frequently Asked Questions on U. S. Design Patents. The U.S. Patent and Trademark Office (U. S. PTO) has available on its web site a list of Frequently Asked Questions (FAQ) [link to the FAQ page; also be sure I have added this item to the Special Interest web site page] about design patents. In addition, the U. S. PTO FAQ page provides access to forms related to design patents that can be printed out.

WIPO IP Library. The World Intellectual Property Organization (WIPO) has an excellent IP library and staff that can help in locating WIPO publications and other resources. The design section of this library is very thoroughly indexed and the library has an extensive on design protection.. The WIPO web site has a link to its Library page. The WIPO Library web site page provides access to some of these materials, and has a special feature that is worth examining regularly, listing the contents of recent IP publications.

Recent Major Design Patent Decision. In re Daniels case was decided on May 20, 1998 by the Federal Circuit Court of Appeals (No. 97-1225, Serial No. 29/020,787), in favor of Daniels. It is victory for U.S. design patent system flexibility and enables the system to interface more effectively on an international level. The Court 's decisions on this web site with the figures. The amicus brief filed by William T. Fryer, III, in support of Daniels is on the site too.

In summary, the Court held that a parent design patent application disclosure showing a product configuration and an overall surface design, along with a distinct and separable insignia can be relied on for a filing date in a continuation application for the product configuration and overall surface design only. A more detailed analysis of the decision will be given, in a subsequent newsletter found on this site.

U.S. Design Patent Special Statutes and Commentary are available on this site. The statutes discussed are 35 U.S.C. sections 171-173 (1998). They are the foundation for the U.S. design patent system, coupled with the general patent statute that applies where there are no special statutory provisions applicable to design patents.

Report on design patent topics from PTO Open House, held July 29, 1998. The format and presentations allowed participants to learn PTO plans and performance evaluations. The Design Group staff presented several important topics and ample time was available for discussion. Design patent law practitioners should plan to attend the next Open House.

Paper: U.S. Protection of Well Known and Famous Marks, submitted for presentation at September 24-25, 1998 Conference of the Indonesia Intellectual Property Society at Bandung, Indonesia. The paper introduces recent developments in the U.S. on protection of well known and famous marks. The Federal Anti-dilution Act, 15 U.S.C. section 1125(c) is discussed, with particular attention to its application to Internet domain name situations.

FRYER NEWSLETTER - No. 2,  NOVEMBER 10, 1997. This newsletter features include an analysis of the major new PTO rule changes that effect design patent application procedures. Other topics include an update on the PTO reengineering project affects on design patent applications, a brief report on the 7th meeting of experts on the Industrial Design Treaty, held November 3-7, 1997, and the status of the AIPLA industrial design publication of selected articles from the 1996 conference.

This newsletter introduces several new documents now on the web site. The testimony by Professor Fryer on the Vessel Hull Design Protection Act hearing, held October 23, 1997 is provided. Another document is the amicus curiae Brief filed by Professor Fryer in the In re Daniels appeal to the Federal Circuit on the right to claim subject matter from an earlier filed design patent application in a copending application. The final document is a paper given by Professor Fryer at the Paris meeting of ATRIP, July 7-9, 1997, on use of the Internet for intellectual property research and communications.

FRYER NEWSLETTER- NO. 1, MARCH 24, 1997. The first newsletter was published when this web site was started. The newsletter introduction explained that the purpose of the web site and the newsletter series was to provide current information on industrial design protection. Other topics presented included an alert to the proposed changes in U.S. Patent and Trademark Office (PTO) rule changes, with several changes having a major effect on design patent application practice. Another topic was a review of the revision work on the Hague Agreement Concerning the International Deposit of Industrial designs (Industrial Design Treaty), through the 6th meeting of experts in 1996. The newsletter introduced the IBM web site and explained how to obtain copies of U.S. design patents from it. A report was given on the 1996 Industrial Design Conference and the upcoming publication of selected papers. The newsletter described the PTO reengineering project that has used the Design Group to try out an integrated processing of design patent applications, from mail opening to preparation for issue.

MAJOR PTO DESIGN PATENT RULE CHANGES. The PTO rule changes, effective December 1, 1997, effect several important design patent procedures. The changes include a relaxation of the drawing shading requirements, simplification of the requirements to obtain a filing date, and allowing for the first time in design patents for color drawings and photos. This report describes the changes and analyzes their impact, as well as suggests the need for other rule changes.

FRYER PAPER:  Internet IP Research and Publication: A search for Quality and Global Communications, presented at the annual meeting of ATRIP (International Association for the Advancement of Teaching and Research in Intellectual Property), July 7-9, 1997, Paris, France. This paper reviews the experience of the author in creating and using this web site. Several web sites that are particularly helpful for IP research are identified.

FRYER TESTIMONY on the Vessel Hull Design Protection Act, H.R. 2696 (105th Cong., 1st Sess.), before the House Judiciary Subcommittee on Courts and Intellectual Property, October 23, 1997. This bill resembles the Semiconductor Chip Protection Act of 1984 and the general industrial design legislation, as represented by H.R. 1790 (102d Cong., 1st Sess.). It is an effort to focus design protection on an industrial where copying may create unfair competitive advantages. The testimony provides a historical perspective on the bill, and a preliminary evaluation. An introductory report and resources on this legislation, along with Professor Fryer's testimony, are provided on this web site.

How to Locate and Copy U.S. DESIGN PATENTS on the Internet. This feature introduces the IBM web site that has U.S. design patents (text and drawings). It offers suggestions on how to use the IBM resource most effectively, and a link to it.

SPECIAL INTEREST WEB SITES ON INDUSTRIAL DESIGN PROTECTION. This page includes a brief description of and links to web sites that specifically address design protection topics. Sites listed includes the U.S. PTO web site where a very valuable practice document is found: Guide to Design Patents. Another web site is the AIPLA Industrial Designs Committee current report. A link is provided to The Hungarian Patent Office web site where the Hungarian design patent law and procedures are summarized.
 
 

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This web site is managed by William T. Fryer, III, Professor, University of Baltimore School of Law, Baltimore, Maryland, U.S.A. It is a personal project and not associated, sponsored or directly supported by the University, or any other organization.

If you have comments or suggestions on matters concerning this web site, send a message to: fryer@fryer.com --.

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