AIPPI Congress Report 15: Partial Designs: Full Protection?

The only thing that the AmeriKat is truly
partial to is napping in sunbeams...

Although AIPPI's Sydney Congress seems a distant memory for those now wrapping up in wool coats and battling the winter's darkness, that has not stopped the reports from the conference swinging through.  The latest report is from Daniel Lim (A&O) who details the panel session on partial designs:

"One of the driving goals of AIPPI is improve and promote the protection of intellectual property at both national and international level. As part of this remit AIPPI regularly opines on divergent and complex areas of IP law through the work of its study and standing committees and formal resolutions, with a view to harmonisation of law and practice (where sensible) across different jurisdictions.

Design law is regarded by many as perhaps the least harmonised of the major IP rights, despite its increasing popularity and a storied body of case law, from the early spate of spare part litigation through to Dyson vacuums, Trunki cases and a supporting but significant role in the smartphone/tablet wars.

Accordingly, it was no surprise to see much activity to excite design law enthusiasts at the 2017 AIPPI 2017 World Congress in Sydney, in the form of the launch of a new book edited by Chris Carani, “Design Rights: Functionality and Scope of Protection” born out of the work done on the 2016 AIPPI study question in relation to the requirements for protection of designs, and a very well attended design law panel session focussed on partial designs, pithily titled “Partial Designs: Full Protection?”.

The panel session focused on the increasingly important topic of protection of partial designs, defined by the panel as being “parts(s) of a product less than the whole” – e.g. the handle of a pan (as opposed to the whole pan including the handle). The panel topic was of particular interest to conference attendees given that partial designs formed one of the 2018 AIPPI study committee questions (a fact which itself is a good indicator that this is an important area, worthy of attention).

Moderated by David Stone (Allen & Overy) and featuring Dunstan Barnes (McAndrews, Held & Malloy), Tomohiro Nakamura (Konishi & Nakamura) and Robert Wulff (Griffith Hack), the panel represented a truly international line up of design law expertise, effectively covering the law in 31 countries. The panel gave an overview of the law in relation to partial designs in their respective jurisdictions, with particular focus on 4 key questions: 

• Can partial designs be protected? 
• In practice, how can the claimed and disclaimed portions of a partial design be depicted in a design drawing? 
• Can spare parts be protected? 
• Can parts (other than spare parts) be protected when invisible in normal use? 

David provided a summary of the position in the EU, noting that partial designs are capable of protection.  They may be depicted by showing just the part, or by showing the whole product and using dotted lines or shading or blurring to indicate claimed and disclaimed portions of the product drawing. Importantly, he noted that an unregistered design right exists in the EU, which allows the right holder to modify the aspects of the design over which protection is claimed in order to reflect the part(s) of their design that have been copied.  

In respect of spare parts, at the level of EU-wide design rights the question that must be asked is whether the part comprises “a component part of a complex product” – if so, then it will only be protectable if it is visible whilst the complex product (which must be capable of being assembled and disassembled) is in “normal use”. In other words there is no protection for the internal workings of a machine. However, David noted that the position in respect of national design laws throughout Europe may differ – some protect non-visible spare parts (France, Germany) whilst others do not (UK, Spain). 

Dunstan noted that in the US, designs are protected in the form of so-called “design patents” and there is no protection for unregistered design rights. Protection is available for partial designs. In contrast to some other jurisdictions which expressly do not allow the use of accompanying text in the application to help describe the design, in the US a short description is in fact a requirement. Such text can be used to describe the meaning of broken lines, shading or other indications in the drawing of what is claimed as part of the design. Spare parts are able to be protected by design rights and, Dunstan noted, there is active lobbying of Congress around this issue.

Nakamura-san stated that partial designs are also capable of protection in Japan, but interestingly noted that (unlike the US or EU) the name of the product to which the design is to be applied will in fact determine the scope of protection – i.e. a registered design for cars cannot be enforced against toy replicas. There is some scope for the protection of unregistered designs through the lens of an unfair competition action or copyright. Spare parts and accessories are capable of protection, whether or not they are visible in normal use. Nakamura-san noted that in Japan, registered designs are often turned to for protection in crowded markets like the auto industry, where it will be difficult to get a patent due to lack of inventive step over the prior art. 

Robert noted that there was a general lack of authoritative Federal Court case law on partial designs and spare parts in Australia (and as someone who formerly practised in Australia I certainly agree!), but that it is the practice of the Australian Designs Office to recognise claims for partial designs (again usually indicated by way of dotted lines or shading). There is no unregistered design right in Australia and Australian copyright law limits the protection for copyright works which are industrially applied to a product (the “copyright/design overlap”). Robert’s view was that the exclusion from infringement of design rights (on policy grounds) for repair of a complex product “so as to restore its overall appearance in whole or part” would generally act to exclude the protection of spare parts.

Following this whistle stop tour of partial design protection in the EU, US, Japan and Australia, the panel took questions and comments from the active and engaged audience, including a quick Canadian overview – partial designs and spare parts protection and use of dotted lines are allowed, but no protection for parts invisible in normal use. David also noted, following a question from a Singaporean participant, that globally there has been a trend towards the separate protection of sets (aka “system designs”), such as a cutlery set, in addition to protection of the individual elements of those sets. 

The panel then brought up a number of partial design examples as case studies and asked the audience to consider whether they would be capable of protection in their home jurisdictions. One of these examples, see slide 19 here, was the “home” button on an iPhone. The consensus was that this partial design would probably be protectable (subject to novelty and obviousness considerations) in the EU, US and Australia albeit perhaps with a narrow scope of protection, but probably not in Japan, due to the complex array of exclusions there. Another example was that of a femoral hip prosthesis [insert slide 20]. Each of the panel members considered this would be protectable in their respective jurisdictions, with David noting that in the EU this would not be considered to be a component part of a complex product in light of the fact that humans are not products. 

Appropriately, given partial designs are a 2018 AIPPI study topic, the session ended with David presenting a number of potential aspects of partial design protection that could be put forward for harmonisation, ranging from the simple principle that partial designs should be registerable, to the idea that there should be no requirement for visibility during normal use for partial designs that are not spare parts (see slide 24 here).  

As study committees around the world take up the partial design baton moving into 2018 and the next AIPPI World Congress in Cancun it was clear from the diversity of views from the audience that partial designs (and design law more generally) remain an area ripe for harmonisation (and perhaps another book!). With plenty to do in this area this is clearly a space to watch!"