From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 9 July 2013

OHIM finally moves on invalidity of Apple designs for tablet computers

First Apple RCD (001888454-0001)
After the judgment from the Patents Court in July last year, which was subsequently upheld by the Court of Appeal, ruling that certain Samsung tablets do not infringe Apple’s Registered Community Design (RCD) 000181607-0001 (see earlier Katposts here and here), three long awaited invalidity decisions just released by the Office for Harmonization in the Internal Market (OHIM), each relating to a different Apple portable display device RCD, got this moggy’s whiskers twitching. Would Apple’s RCDs be found to be invalid, rendering the UK infringement action somewhat redundant?

Unfortunately, this Kat’s excitement was slightly premature since the RCD in question in the infringement action was not among the three RCDs in the decisions released by OHIM. However, there are still some interesting insights into the interpretation of the Community Design Regulation (CDR) to be gleaned from the decisions.

Samsung contested the validity of three of Apple’s portable display device RCDs, namely 001888454-0001, 00188454-0013 and 001222905-0002. Decisions were taken on the 13th, 14th and 15th of May and can be found here, here and here respectively.  It has however taken some considerable time for the decisions to be posted on OHIM's website, a delay that has added not inconsiderably to this Kat's mid-July grumpiness.

The main difference between the three RCDs is the design of the side walls, which connect the front of the device to the back. The first two RCDs (designs 1 and 13 in the same application) have narrow side walls, which turn smoothly into a substantially flat back of the device. The third RCD has a casing forming narrow side walls vertical to the screen, and sharp edges with the back of the device.

Second Apple RCD (00188454-0013)
Five main issues were disputed for each of the RCDs: priority, disclosure, technical function, novelty and individual character. While novelty and individual character were very much based on the facts of the individual RCDs, some more widely applicable points were raised in OHIM’s consideration of priority, disclosure and technical character.


The third RCD (001222905-0002) claimed priority from US design patent application No. 29/353,307. The priority application contained a series of line drawings, with an appendix comprising a further set of photographs and drawings showing a portable display device according to the design. The Apple logo is clearly visible on the back of the device in the images in the appendix although there is a verbal disclaimer in the application stating that the logo is not claimed and is for illustrative purposes only. The RCD in question was registered using coloured photographs and had no Apple logo on the back. These differences led Samsung to contend that the priority claim and the RCD were not in respect of the same design and hence that the priority claim should be disallowed.

Third Apple RCD (001222905-0002)
However, OHIM ruled in favour of Apple, stating that priority was claimed rightfully because the set of coloured photographs in the RCD corresponded to the views in the priority application. OHIM also noted there is a difference in the formal requirements for the representations of claimed designs between the US (which allows the use of verbal disclaimers) and the Community (which only allows the scope of protection to be limited by graphical disclaimers) and acknowledged the difficulty in applying a graphical disclaimer (e.g. dotted lines) to a photograph. Therefore, due to the “absence of harmonised rules for claiming the priorities from and for different jurisdictions” and the fact that the scope of protection of the RCD was considered to be the same as the priority application, OHIM held the priority claim to be valid.


"When I said I wanted an Apple, this was
not what I had in mind..."
[via Catladyland]
Such is Apple’s popularity that there were a number of fan websites which showed speculative ‘mock-ups’ of the next generation of Apple devices. Unfortunately for Apple, some of these ‘mock-ups’ were remarkably close to their RCD and Samsung claimed that these prior designs destroyed the individual character of all three of the contested RCDs. Apple argued that, due to the sheer number of fan websites out there, the content of such sites cannot reasonably have become known and hence that the ‘mock-ups’ from these sites should not be deemed available under Article 7(1) CDR. OHIM preferred Samsung’s argument that, as a highly successful company operating in the IT sector itself, Apple could be expected to be ‘tech savvy’ and resourceful enough to monitor the content of blogs and websites discussing the designs of tablet computers.

Apple further claimed that these ‘mock-ups’ were due to leaks in their group (and not simply due to the feverish imaginations of the legions of Apple obsessives) and hence that they should be excluded from the state of the art as an ‘abuse’ within the meaning of Article 7(3) CDR. However, OHIM held that since Article 7(3) CDR refers to Article 7(2) CDR the exclusion is limited to within 12 months of the priority date. Since the ‘mock-ups’ had been online for almost two years before the priority date of the first and second RCDs (001888454-0001 and 00188454-0013 respectively), the exception could not be applied in these cases.

Article 7(2) CDR specifies that “a disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6…if a design…has been made available to the public: (a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title; and (b) during the 12-month period preceding…the date of priority”, with Article 7(3) CDR stating that “Paragraph 2 shall also apply if the design has been made available to the public as a consequence of abuse…”. The wording of these articles clearly leaves ample room for interpretation [and, says Merpel, misinterpretation].

In this ruling, OHIM have interpreted these articles to mean that disclosures as a result of abuse are only excluded from consideration if they fall within the twelve month period prior to the priority date and that they form part of the state of the art for the assessment of novelty and individual character if they are earlier than this. This leaves RCD applicants in a vulnerable position if, despite their best efforts to avoid internal leaks for example, a disclosure is made abusively and without their knowledge before the twelve month grace period. Such abusive disclosures would appear to destroy the validity of their RCD according to this ruling.
'Mock-up' from a fan website

To this Kat, the interpretation given to Articles 7(2) and 7(3) by OHIM is quite surprising. Instead, it would seem more logical to interpret Article 7(3) to mean that abusive disclosures made at any time shall not be considered to be part of the state of the art, to provide more robust protection to applicants against abuse. Readers, your thoughts on this point would be most welcomed.

OHIM also clarified that only images showing both the front and back views could be considered as comprised in the state of the art for the assessment of overall impression.

Technical function

None of the features which Samsung argued were solely dictated by their technical function within the meaning of Article 8(1) CDR were considered to be such by OHIM. In particular, OHIM stated that products in the field of portable electronic devices “compete not only in their technical features but also in their design features” and that the “design of the product plays a significant role in marketing this kind of product”. Hence, it was found that all of the features play a part in the overall look of the product and were not developed under purely functional considerations.

The first two RCDs (001888454-0001 and 00188454-0013) were held to be invalid due to lack of individual character in view of the ‘mock-ups’ posted on a fan website. The third RCD (001222905-0002) was held to be valid.

This moggy sees these three decisions as a tantalising appetiser before the meaty main course of the six remaining Apple RCDs which are being contested by Samsung. In particular, this Kat eagerly awaits OHIM’s validity decision for RCD 000181607-0001 given the extensive (and expensive) litigation already carried out in respect of this design.

And of course there are three instances of appeal still open to Apple under the wonderfully procedurally economic system by which Registered Community Designs are handled, reminds Merpel.


Peter Smith said...

In European patent law, disclosures made as a result of an abuse are only excluded from the prior art for a period of 6 months (Art. 55(1)(a) EPC).

Joeri Beetz said...

There is a clear AND in the article. Abuse AND within the last 12 months. As Peter already noted, in the EPC the article is even more strict.

It may not sound 'fair' to the applicant, but the main principle is that you cannot protect things that are already in the public domain. An exception is made for evident abuse, but it really is an exception that is only applicable under strict criteria.

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