Design Law Treaty

• Published date: 22 September 2022
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Marks & Clerk
• Author: Mr Gregory Carty-Hornsby

The World Intellectual Property Organisation (WIPO) has recently announced plans to hold a diplomatic conference to negotiate a Design Law Treaty (DLT) with the aim of harmonising the global system for protecting industrial designs. WIPO claims the treaty will eliminate red tape, accelerate prosecution procedures, and improve access to overseas protection for SMEs in low and medium income countries ¹. The announcement has been broadly welcomed across the design community, with Dids Macdonald of UK pressure group Anti-Copying in Design (ACID) expressing her hopes that the treaty will "provide a level playing field globally so that trade agreements can reflect consistency in term and protection to enhance future trade agreements and to benefit individual designers".

The draft Articles ³ and Rules ⁴ of the DLT have been around for quite some time, having most recently been considered by WIPO back in 2015. In light of the renewed political momentum, it is expected that the diplomatic conference will be completed by the end of 2024, with Belarus, Indonesia and Saudi Arabia making offers to host ⁵. The next few years of negotiation will therefore prove crucial as to the impact that the DLT will have on applicants and rights holders around the world.

So, with change afoot, designers might be asking themselves what, exactly, is on the cards?

What's In?

Broadly speaking, the DLT aims to provide harmony across a large array of different aspects of the processes through which individuals can apply for design protection. Most provisions concern formalities-related issues, however a number stand to have a much larger impact.

Grace Periods (Article 6)

Of perhaps the most interest to designers is a proposal to require all jurisdictions to provide a grace period for prior disclosures of a registered design before the first application for the design is filed, provided that the earlier disclosure has been made by the applicant or with the applicant's consent. Grace periods of this type are available in the majority of major global economies, including the US, EU and UK, and are thought to stimulate design innovation by giving designers some time to raise funds between launching their products and incurring the expense of applying for registered design protection.

However, China, the world's most important manufacturing economy, does not currently provide any such grace period. This means that applicants who require a Chinese design to protect their manufacturing base must ensure the design is not published or otherwise marketed before the first application is filed (even when claiming priority). Consequently, designers that require protection in China are effectively denied the use of the grace period globally. During the last revision of the draft treaty in 2016, China did make an objection to the inclusion of a...