INTA Board Approves New Guidelines for Examination of Industrial Designs

Published: May 19, 2021

Irmak Yalciner

Irmak Yalciner Yalciner Patent and Consulting Ltd. Ankara, Turkey Designs Committee—Design Law and Practice Subcommittee

INTA’s Board of Directors on May 4 approved a resolution to adopt an updated version of the Association’s Guidelines for Examination of Industrial Designs. The new Guidelines strengthen INTA’s advocacy on design rights and further its overarching objectives of promoting harmonization of intellectual property (IP) practice worldwide.

The new Guidelines supersede those that INTA initially adopted November 6, 2018. INTA’s 2020‒2021 Designs Committee had reviewed that first edition and recommended the revisions.

The Guidelines for Examination of Industrial Designs provide general guidance on a diverse range of issues related to the examination of applications for industrial designs. They serve as the baseline standard for industrial property offices, and by which INTA can analyze or comment on national and regional guidelines for the examination of design applications.

The revised Guidelines reflect positions taken by INTA and changes in technology since 2018. They focus primarily on advancing the modernization and user-friendliness of design practice.

As an example of the changes, the updated version indicates the principle of full disclosure of the design by recommending that there be no minimum number of views to depict the design in question. The Guidelines propose the possibility of filing as many representations/views as may reasonably be required to adequately disclose the design.

The Guidelines focus on modernization by reflecting advances in technology or practice, such as encouraging the use of filing through secure electronic transmission/e-filing interfaces and filing representations in a video file while still acknowledging the importance of keeping paper-based backups.

The Guidelines now also encourage industrial property offices to accede to the World Intellectual Property Organization’s Digital Access Service (DAS). This will help eliminate the obligation of requesting and obtaining certified paper copies of documents from one industrial property office and then submitting those documents to other Offices. Considering and implementing technological advances and the need to protect designs in the field of graphical user interfaces (GUIs), projected, holographic, or virtual/augmented-reality designs (collectively, PHVARs), and interior designs are also part of INTA’s recommendations under the updated Guidelines.

With the aim of making the Guidelines more user-friendly, some additional explanations and best practices have also been added. Notably, the Guidelines include design representations and examples of published designs, available on the public record.

Prior to the Board’s signoff, INTA’s Advocacy Group Council and Executive Committee approved the revised Guidelines after receiving feedback from the full Designs Committee. The Design Law and Practice Subcommittee Chair Bruce Longbottom (Eli Lilly and Company, USA) and Irmak Yalciner (Yalciner Patent and Consulting Ltd., Turkey), a member of the Designs Committee, presented the revised Guidelines to the Board for a vote.

A Task Force within the Designs Committee’s Design Law and Practice Subcommittee carried out the review and update of the first set of Guidelines. The Task Force included the following members: Michael Hawkins (Noerr Alicante IP, S.L, Spain), Linda Joy Kattwinkel (Owen, Wickersham & Erickson, P.C., USA), Asa Kling (Naschitz, Brandes, Amir & Co, Israel), Malte Nentwig (Boehmert & Boehmert, Germany), Rodrigo Sammut (Andes IP, Chile), Irmak Yalciner (Yalciner Patent and Consulting Ltd., Turkey), and Erika Yawger (Apple Inc., USA).

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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