Weekly Design Update – Nov 2021 (1 of 3)

Hi all!

We have now included all official fees for Finland and Portugal as part of our IP Services offering.  If you would be interested in having these official fees imported into your system as part of our Equinox Official Fee Management Service, please send an email across to ip-services@workanyware.co.uk and we will be in touch!

Our current monitored jurisdictions are the United Kingdom, European Union, EPO, WIPO, Benelux, the Netherlands, Belgium, Germany, Australia, New Zealand, Canada, Ireland, Israel, Luxembourg, Finland, Portugal and the United States of America.

All of our monitored official fees can be viewed under the ‘Official Fees’ tab of the IP Portal!

“Australia’s Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Amendment Act) received Royal Assent on September 10, 2021. The Amendment Act updates the Designs Act 2003 (Designs Act). Notable changes include the introduction of a 12-month grace period for exclusive licensees to commence infringement proceedings and simplification of the registration process.

The Amendment Act includes seven schedules:

• Schedule 1 introduces a 12-month grace period for filing a design application following public disclosure of the design. Prior to the enactment of this amendment, public disclosure of a design could be prejudicial to the novelty of the design. The designer can file for protection during the grace period if the original disclosure of the design was by the designer or the design’s owner, a party authorized by the designer or design owner, or by a party that obtained the design from the designer or design owner without their permission.
• Schedule 2 provides a prior use infringement exemption where use commenced prior to the lodgment of a design application.
• Schedule 3 removes the option of having a design published without registration. It also removes the requirement for an express request for registration.
• Schedule 4 affords a court a discretion to refuse to award monetary relief or, in the case of innocent infringement occurring prior to registration, to impose reduced monetary relief.
• Schedule 5 provides an exclusive licensee with the right to bring design infringement proceedings.
• Schedule 6 enables the Registrar of Designs to make changes relating to formalities requirements for design applications.
• Schedule 7 includes minor clarifying amendments to the Designs Act:
  • Part 1 introduces the standard of the “familiar person” in assessing validity or infringement of a registered design when comparing the registered design with another design. Previously, the “standard of the informed user” applied, and the amendment clarifies that a “familiar person” need not be a user of the product to which the design applies.
  • Part 2 covers provisions dealing with the revocation of a design registration where certification was obtained by fraud, false suggestion, or misrepresentation.
  • Part 3 clarifies the status of a registered design that is renewed during the renewal grace period.

The various schedules have the following commencement dates:

Schedule 7, Parts 1 and 2, commenced on September 11, 2021. Schedules 1 through 6, and Schedule 7, Part 3, will commence on March, 10, 2022.”

“The EUIPO Guidelines are now available in 23 official languages of the EU. They were adopted by the Executive Director on 8 February 2021 in Decision No EX-21-1, and have been in force since 1 March 2021.

The Guidelines were previously available in the five working languages of the EUIPO (English, French, German, Italian and Spanish). The following languages have now been added: Bulgarian, Croatian, Czech, Danish, Dutch, Estonian, Finnish, Greek, Hungarian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovene and Swedish.

About the Guidelines

The EUIPO’s current trade mark and design practice is reflected in a series of Guidelines for Examination that are intended to help both our users and our staff in charge of the various procedures.

Read the guidelines.“

“New! If designating Japan in an international design application, you can now submit a supporting document in the case of exception to lack of novelty, and/or a copy of a priority document directly to WIPO through eHague. (You may also use Annex II or V of Hague System form DM/1.) We will then send those documents to the Japan Patent Office (JPO) for you.

Important! You must attach these documents to your international application at the time of filing, i.e., do not send them separately to WIPO.

How will this help you?

Previously, you had to submit these documents directly to the JPO, within three months (priority document), or thirty days (exception to lack of novelty), of the date of publication of the international registration in the International Designs Bulletin (IDB). Any holder residing outside of Japan had to do this through a local representative. While this is still possible, this streamlining of procedures will save you both time and money, and ensure that you do not lose your claimed right, should you mistakenly miss the deadline.

Jurisdictions now covered

This type of document submission is now possible when designating Japan and/or the Republic of Korea; you provide just one document – per priority claim or per exception to lack of novelty – to cover one or both jurisdictions.

WIPO Digital Access Service – priority documents

Reminder! Both the JPO and KIPO (Korean Intellectual Property Office) participate in WIPO’s Digital Access Service (DAS) as “depositing” and “accessing” offices for design applications.

If you filed your first application with another intellectual property (IP) office – which is also a DAS depositing office – then it is easier and safer to share priority documents using a DAS code. You can provide a DAS code through eHague or Hague System form DM/1.”