WIPO Design Law Treaty Diplomatic Conference to Take Place in Saudi Arabia

 

Author Emmanuel Berrod Licence CC BY-SA 4.0 Deed Source Wikimedia Commons

Jane Lambert

A diplomatic conference is a meeting of representatives of governments that are negotiating the terms of an international agreement. On 21 July 2022, the WIPO General Assembly voted to convene a diplomatic conference to conclude and adopt a Design Law Treaty before the end of 2024.  On 9 Oct 2023, the Preparatory Committee of the Diplomatic Conference to Conclude and Adopt a Design Law Treaty agreed to hold the conference in Riyadh between 11 and 22 Nov 2023 (see Saudi Arabia Set to Host 2024 Diplomatic Conference to Conclude Design Law Treaty PR/2023/909 9 Oct 2023).

Although countries that belong to the World Trade Organization are bound by arts 25 and 26 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") to protect new or original industrial designs for at least 10 years and the Hague Agreement facilitates international design registration, the requirements for registration vary considerably from country to country.   The Design Law Treaty is intended to iron out those differences.   A draft of the proposed Treaty and its Regulations have been circulating for some time.  According to the WIPO press release,, the Treaty should make it significantly easier for designers and small and medium-sized enterprises to register their designs.

The new Treaty coincides with the Commission's proposals for a new Designs Directive to replace Directive 98/71/EC and amendments to the Community Design Regulation which I shall discuss in detail in NIPC News and IP after Brexit.,

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page.

The New DIFC Intellectual Property Law - Designs

Author Imre Salt Licence CC BY-SA 3.0 Deed Source Wikimedia Commons

Jane Lambert

On 21 Nov 2019, a new intellectual property law known as Intellectual Property Law DIFC Law No 4 of 2019. came into force in the Dubai International Financial Centre.  I wrote an introduction to, and overview of the new law on 11 Dec 2019 and discussed its provisions on patents and utility models (known as "utility certificates" in the DIFC) in The New DIFC Intellectual Property Law - Patents and Utility Certificates on 9 Jan 2020. In this article, I discuss Chapter 2 of Part 2 of the Law on General Rules on Industrial Drawings and Industrial Designs.

Design is important to Dubai   A report commissioned by The Dubai Design & Fashion Council and the Dubai Design District expected the design sector, which includes architecture, fashion, graphic, interior and product design, to grow by 6% a year between 2016 and 2021.  The Dubai government supports designers through the Council by providing advice and information on intellectual property and other legal services.  Well before the new Intellectual Property Law came into force, the Council agreed with the DIFC Disputes Resolution Authority to incorporate a DIFC choice of law clause into their contracts and designate the DIFC Dispute Resolution Authority for the resolution of disputes (see Designer Courts  12 March 2018 DIFC Courts press release).

The new DIFC design law is compressed into three short articles:

• Art 14 confirms that the registration of Industrial Drawings and Industrial Designs with the UAE Ministry of Economy is recognized in the DIFC and that the rights conferred by registration will be enforced in the DIFC;
• Art 15 sets out the rights conferred by registration; and
• Art 16 applies the provisions on entitlement and infringement in patent and utility certificates law to Industrial Drawings and Industrial Designs.

The table in para 3 of Sched 1 to the Law defines an Industrial Drawing as:

"Any innovative creation of lines and colors which generate a product that can be used in any industry or craft and in respect of which the Ministry has issued a deed of protection."

The same table defined an Industrial Design as:

"any innovative three-dimensional shape that can be used in industry or craft and in respect of which the Ministry has issued a deed of protection."

Applications to register Industrial Drawings and Industrial Designs are made to the Ministry.  The patent application portal appears to indicate that it is possible to apply for registration through that page but it has not been possible to obtain confirmation through the chat facility.

As art 16 applies the provisions of arts 9 to 13 to Industrial Drawings and Industrial Designs, the rules as to entitlement and employees' compensation are4 the same as for patents. Readers are referred to my article on patents and utility certificates of 9 Jan 2020.

Art 15 (1) of the Law confers on the registered proprietor of an Industrial Drawing or Industrial Design the following exclusive rights:

"(a) using the Industrial Drawing or Industrial Design in manufacturing any product;
(b) using, selling, or offering for sale any product relating to the Industrial Design or Industrial Drawing;
(c) importing any product using an Industrial Drawing or an Industrial Design; or
(d) possessing an Industrial Drawing or an Industrial Design with intention to use, or offer for sale, or sell the same."

Art 15 (2) makes clear that the rights referred to in art15 (1) shall be restricted to acts that are undertaken for industrial or commercial purposes and shall not extend to acts relating to a protected product after its sale.  This is similar to art 8 (2) for patents and utility certificates and seems to indicate the incorporation into DIFC law of something like the US first sale doctrine.

The rules on infringement, defences to patent infringement and reversal of,  the burden of proof that apply to patents and utility certificates under arts 9 to 11 are applied to Industrial Drawings and Industrial Designs by art 16. References in those articles to "patents" or "utility certificates"are deemed to refer to "Industrial Drawings" or "Industrial Designs" as the case may require.  Once again, readers are referred to my article on patents and utility certificates.

Anyone wishing to discuss this article or DIFC design law generally should call my clerk on  +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, VoIP or email,

Saudi Arabia: More IP Information in English

On 22 May 2011 I wrote Saudi Arabia: Overview of Intellectual Property Law. I supplemented that article with Information in English on Saudi Patent Law on 26 July 2014. In my first article I wrote:

"There is no intellectual property office as such. Patents, industrial designs, chip topographies and plant varieties are registered by the The King Abdulaziz City for Science and Technology ("KACST") which is also the Saudi Arabian national science agency, national laboratory and internet authority for the .sa country code top level domain."

KACST has now devoted a section of its website to patents, designs, semiconductor topographies and plant breeders' rights.

KACST now publishes the Saudi Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties, and Industrial Designs (Royal Decree No. (M/27) dated 17/7/2004) and the Implementing Regulations of theLaw of Patents, Layout Designs ofIntegrated Circuits, Plant Varieties,and Industrial Designs in English. This legislation is supplemented by FAQ on patents, industrial designs, plant varieties and integrated circuits. There are links to the Paris Convention and TRIPS, flowcharts of the patent and design application processes and statistics.

Should anyone wish to discuss this article or Saudi intellectual property law in general, call me on +44 7404 5252 during office hours or use my contact form.