According to the Community Design regulation, it is possible to protect a product design via a so-called unregistered community design for a period of three years from the date on which it was first made available to the public in the territory of the European Union. The process of making a design available to the public is referred to as “disclosure”. The extent to which a design has been disclosed and the ability to prove this is therefore critical to design protection.

The above decision thereby answers the question whether the disclosure of a product by means of a photograph can also give rise to design protection for (only) a part of that product. Previously, Ferrari had filed suit for infringement of a non-registered community design after Mansory Design (production and distribution of tuning kits) had made the appearance of another Ferrari model look as similar as the design of the Ferrari FXX K.

The EuGH ruled: Yes, provided that the appearance of this part or component is clearly recognizable in this disclosure.

Practical tip:

According to the EuGH ruling, the appearance of the individual part must be clearly recognizable and visible in the course of the disclosure. Although there is no obligation to disclose each individual part of the product separately, the parts or components must be located in the visible area of the product and must be clearly outlined by lines, contours, colors, the shape or a particular surface structure.

Der Beitrag EuGH rules: Parts of a product can be claimed as a non-registered design erschien zuerst auf karo IP | Patentanwaltskanzlei.

The priority period for EU designs is now 12 months instead of the (usual) 6 months priority period if the applications invokes a priority of a PCT patent application.

The ECJ (newly) stated that the priority right and thus also its time limit must be established according to the earlier application, and that the later design is not relevant for this.

This was justified by the fact that the priority period begins to run on the date of this application and consequently the creation of the priority right itself as well as the beginning of the priority period depend on the earlier right and its application.

This now offers the opportunity to register design protection in Europe for a significantly longer period for product designs specifically disclosed in a patent application.

Der Beitrag General Court of the European Union (EuG) extends priority period for EU designs to 12 months erschien zuerst auf karo IP | Patentanwaltskanzlei.

In the case of the patent in dispute (dental implant), which was declared invalid in patent revocation proceedings, one of the issues was whether the publication of a registered design can be considered as a starting point in the examination for inventive step.

The BGH concludes that published designs – as well as other pictorial representations and illustrations – may be considered as a starting point for considerations of inventive step if the pictorial representation (directly and unambiguously) reveals technical relationships or functions.

Indeed, the concept of prior art is not limited to patent literature, but includes “anything which has been made available to the public by written or oral description, by use or in any other way before the filing date of the European patent application” (Art. 54(2) EPC).

Practical tip:

It is advisable to also consider design publications, among other things, as part of preliminary searches and to include these more strongly in the strategy considerations.

In particular, it can also be useful to request a so-called deferred publication for design applications if there are indications that the technology of the product also still offers potential for patent or utility model protection.

Der Beitrag Registered design as starting point for examination for inventive step erschien zuerst auf karo IP | Patentanwaltskanzlei.

The claims, descriptions and drawings of the parallel patent disclosure for a product are among the objective circumstances relevant to the individual case, which are to be assessed when examining whether appearance features are exclusively due to the technical function of the product.

The patent disclosure may provide information as to which features of the product implement the technical teaching underlying the patent and are therefore at least also technically determined.

However, the absence of considerations on the visual appearance of the product in a patent disclosure does not in itself allow the conclusion that an appearance feature is exclusively technical, any more than the presence of considerations on its technical function.

Rather, in both cases it must be examined whether circumstances outside the patent disclosure indicate a visual conditionality of the appearance feature in question.

Practical tip:

In principle, the possibility of applying for comprehensive product protection with different types of protective rights (in this case design and patent) is confirmed here.

However, the prerequisite for this is that the respective criteria, which can also be formulated in the opposite way, are complied with. A strategy is therefore also required here as to what is presented as highlighted in the respective IP right applications.

Der Beitrag A product may be protectable as a design for which a technical protection right exists at the same time erschien zuerst auf karo IP | Patentanwaltskanzlei.

Under Paragraph 4 of Design Act a design which is used in or incorporated into a product which is a component part of a complex product is considered to be new and to have individual character only if the component part incorporated into a complex product remains visible when that product is used as intended and those visible features of the component part itself satisfy the requirements as to novelty and individual character.

It is therefore indispensable that a component part incorporated in the complex product remains visible as a component part of the complex product when it is used as intended; on the other hand, a visibility which is only achieved by or on separation of the component part from the complex product cannot constitute such visibility.

Practical tip:

In the present case, the visibility (under trademark law) of the underside of a bicycle saddle on a bicycle (complex product) was challenged because this underside could actually only be viewed when the bicycle saddle was replaced.

It should therefore be carefully examined whether an actual possibility of recognising design features remains even when the entire product is in use.

It remains to be seen whether this (high) requirement will also be confirmed by the pending appeal.

Der Beitrag A (non-visible) second product that is fully integrated in another product is not eligible for design protection erschien zuerst auf karo IP | Patentanwaltskanzlei.