Diplomatic conference, Riyadh, Saudi Arabia, November 9-22, 2024,
Introduction
In Riyadh, Saudi Arabia, on November 22, 2024 an international Design Law Treaty was signed, establishing a new legal regime of protection of industrial design at the international level. Also, Regulations Under the Design Law Treaty was adopted, additionally clarifying and elaborating basic provisions of the Design Law Treaty.
Negotiations about the international Design Law Treaty lasted for a very long time. They started in 2005, and ended now in 2024. The reason for such a long period of negotiations was the unwillingness of some of the different international actors to deviate from their goals which they wanted to achieve by adopting this Agreement.
Reason for adopting international Design Law Treaty
The procedure for protecting industrial design today has not been unified at the international level. The reason for the passing of the international Design Law Treaty is the overcoming of the existing differences in the national legal systems regarding industrial design protection and establishment of the new, international legal framework in that field, bringing equal rules of procedure for the users all over the world. In other words, this Agreement should achieve simplicity, predictability and legal safety in the procedure for industrial design protection, at the global level.
In the broadest sense of the word and without inspecting details, I will try to outline the benefits that this international treaty brings to designers.
The Treaty regulates the issue of the content of the application for the protection of industrial design and establishes which elements constitute the application for the protection of design. Also, the Treaty establishes which conditions must be fulfilled by the industrial design application regarding regularity in order to be granted priority right.
Then, the Treaty (and Regulations adopted along with the Treaty) legally regulate manners of graphical representation of the industrial design in the application. For example, the designers have the possibility to choose the way how to visually represent their design – by photographs, drawings, video clips, etc.
The Treaty determines the period of tolerance for the preservation of conditions for novelty in case when the design has been disclosed before the submission of the application for the protection of right, so-called grace period.
The Treaty also deals with the certain procedural issues like the possibility of prolongation of the term for the answer to the examination result and reinstatement of rights if the party misses the official deadlines in the procedure for the protection of industrial design.
Briefly, the Treaty goes into all the essential and important procedural issues of industrial design protection.
When we speak about the position of Serbia, the potential adoption by the National Parliament shall not bring any significant changes in our practice in the industrial design protection procedure. The vast majority of procedural rules, brought by the Treaty from Riyadh, Serbia has been implementing for decades in its practice. However, if the regulations would be widely accepted by the international community that would have visible benefit also for our designers that have the intention to place their designs on the international markets. Quite certainly, it is good that after the Patent Law Treaty (PLT) and Singapore Trademark Law Treaty (TLT), we have also this Treaty which regulated on the international level the procedure of industrial design protection.
What has been negotiated in Riyadh?
One of the questions discussed for a long time referred to the providing of technical assistance to those countries that find such assistance necessary for the implementation of the Treaty, on which after many years, the agreement was finally reached, which is of course a very good thing.
One of the controversial issues, discussed until the very last day, was the issue concerning the request for the grant of industrial design, as the element of the application for industrial design recognition, containing so-called “disclosure requirement”. What does that mean?
African countries and states of Caribbean region have long insisted that in the application for the protection of design, information should be included concerning whether the applied design has been based on someone’s traditional knowledge, for example, on some traditional cultural values or genetic resources. This provision has been controversial for a great number of countries because it touched on the very essence of what represents the condition of novelty as the basic condition for the grant of industrial design. As a matter of fact, if somebody’s design is based on somebody else’s traditional design, for example folk costume, then it is quite clear that such a fact can influence the condition of novelty referring to that design. Also, request to include information of genetic resources on which industrial design is based in the application, would also be unacceptable having in mind that it is not possible for the genetic resources to be incorporated into the design. The CEBS group of countries, the EU, the USA, Japan and other countries insisted that this condition should not be entered in the design application, which was finally accepted. As a compromise, it has been stated that a member state “may” provide in its national legislation that the application for the protection of design contains indication of any previous application or registration, or other information, including information on traditional cultural expression and traditional knowledge, of which the applicant is aware that may be relevant for the eligibility for registration of industrial design. “This is a broad formulation which, as quoted above, contains phrase “information relevant for the assessment of eligibility” which can provide the examiner with more information that is important for the assessment of the novelty and individual character of a particular design.
Still, another issue discussed referred to the conditions of what must be contained in the application for the grant of industrial design in order that the applicant may acquire the priority right.
The draft Treaty proposed that, in addition to the usual requirements, like an information about the applicant, clear representation of industrial design, information about the representative, if there is any, etc. there should also be a provision stating “any other indication or element prescribed by the national law”. This proposal was abandoned and numerous countries strongly opposed the proposal stating their reasons why that should not be part of the international Riyadh Treaty.
International treaties have an aim to bring order and equal treatment with regard to the procedure concerning industrial design protection. What designers around the world need, as well as the industries based on this kind of right, is legal certainty and predictability regarding conditions for the protection of design, as already mentioned. The right of priority is in the heart of industrial property and the conditions for its acquiring should not be different from one country to another. Those conditions should be uniform at the international level and set in such a way that any average designer may realize then. Therefore, it is satisfactory that in the final text the formulation giving freedom to every country in the world to prescribe at will condition for the acquiring the priority right was abandoned.
A provision that was also discussed was the one dealing with the issue of availability to the public of the industrial design before filing the application for the protection of design at the competent body, so called grace period.
I would like to mention that the substantive conditions for the protection of industrial design (novelty and individual character) are examined at the time of filing the application, that is at the moment of acquiring priority right. However, it often happens that designers disclose their design before filing the application, which violates novelty of the design, creating potential problem for the protection of right. Therefore, in our and other numerous national legislation regulating this subject matter, a procedural advantage has been introduced saying that such design may be taken as novel (under certain conditions, of course), even if its novelty has been disclosed before the filing of the application. This period of tolerance (grace period) is important procedural advantage for designers, in particular those not familiar with the concept of intellectual property, which are the vast majority, and that often disclose to the world their design even before they file the application for the protection of rights. Not to lose the novelty of design, the laws prescribe that in the certain time period, under certain conditions, the disclosure of design must be tolerated without violating the novelty requirement.
In Riyadh, there were many discussions whether the publication of design before the filing of the application is substantial or procedural condition, as well as whether the period of tolerance shall last 6 or 12 months before the date of the filing of the application. It has been decided that we shall keep in the Treaty the provision according to which the grace period is 12 months before the filing of the application, but it has also been stated (Article 31 of the Treaty) that every interested party, signatory of this Treaty, may, with regard to Article 7 of the Treaty (regulating that issue), make reservation and not apply it in the national legislation. The reservation was entered at the request of the People’s Republic of China.
Still, another question that led to a long discussion was the issue of the mandatory representation of foreigners before the national institutions competent for the protection of industrial design. The provision which was adopted, article 5(2)(b), is stated:
“The applicant, holder of right or some other interested party that has no residence nor real and effective industrial or commercial seat on the territory of the contracting party may independently enter in the procedure before the competent body on the occasion of the filing of the application for the purpose of establishing the date of the filing of the application and only providing the payment of the fee has been done.” This was the proposal of the European Union, adopted in the end, but with the right of the contracting states to make reservation regarding this provision (Article 5(2)(b)).
Still, one more provision entered into the Treaty should improve the efficiency of the procedure for the protection of industrial design. That is Article 11 of the Treaty under the title of the “system of electronic design”. The mentioned provision obliges the signatory states to make an “effort” to secure the system of electronic applications and electronic exchange of documents that prove the priority right. I think this is a good trend and electronic application offers significant advantage for the applicants filing industrial design applications all over the world.
These are, in the broadest sense, the provisions predominantly negotiated in Riyadh.
Text of the Treaty is contained in the document DLT/DC/22.
Diplomatic conference – bodies and manner of work
The diplomatic conference is the international format designed for the passing of new international agreement. The decision about the organization of the diplomatic conference in Riyadh was passed by the General Assembly of the World Intellectual Property organization at its 55th session in July 2022 in Geneva.
The diplomatic conferences are international meetings taking place in compliance with their internal general acts. That is also true for the Diplomatic conference in Riyadh. In that respect, the procedure of passing the international treaty on design was legally regulated by the Rules of Procedure of the Diplomatic Conference, DLT/DC/2.
The bodies of the diplomatic conference are the following:
1) Credentials Committee – consisting of seven members chosen at the conference from the proposed representatives of the delegations of member states.
2) Main Committee I – consisting of representatives of all delegations of member states. The subject matter of negotiation before this committee are the substantial provisions of the Treaty. This Committee can establish working groups having its own president and two vice presidents.
3) Main Committee II – consisting of the representatives of all delegations of member states. The subject matter of negotiation before this committee are the transitory and final provisions of the Treaty. This Committee may establish working groups that also have its president and two vice presidents.
4) Drafting Committee – consisting of 19 members, 17 chosen at the conference from the nominated representatives of the member states delegations and 2 members nominated ex officio (2 Presidents of the Main Committees) The job of the Committee for the elaboration of the draft of the Treaty is to work on the harmonization of the legal text (agreed upon by the Main Committee I and Main Committee II, in the six official languages of the United Nation – English, Russian, Arab, Spanish, Chinese and French. This job is similar to the legal and technical redaction of our legislation. After the Committee for the elaboration of the text of the Treaty completes legal and technical redaction in all six language versions of the proposed text of the Treaty, it is forwarded to the competent Main Committee for final adoption.
5) Steering Committee consists of the president and 7 vice presidents of the Conference and 4 presidents of other Committees. The task of the Committee is to evaluate the progress of the Conference and propose the final text of the Treaty to be submitted for adoption at the plenary session.
When discussion is concerned, in the process of negotiation, the majority of the discussions about the Treaty from Riyadh took place on the so-called informal consultations. It concerns negotiations taking place on the expert level between the various group of countries. By the way, all countries at the diplomatic conference were grouped in the appropriate groups. Serbia was within the CEBS group of countries (Central European and Baltic States). The representative of the Republic of Serbia actively participated in the informal consultations, work of one working group as well as work of the Committee for Preparation as the vice president and member.
The discussion usually takes place by considering alternative proposals of future legal norms marked with A and B. Proposals for changes and additions to the proposed text of the treaty are usually submitted to the secretary of the competent committee in written form. Secretariat then distributes the copies of the proposal of the delegations and observers.
Every delegation of the member states has a right to vote. The delegation has one vote, can represent only itself and can vote only in its own name. All decisions of all bodies of the conference are passed, if possible, by consensus. For certain kinds of decisions, like the adoption of the Rules of Procedure of the Conference or the adoption of the Treaty and the Regulations, the two-third majority is necessary, while for all other decisions simple majority of votes of the delegations that are present and voting is sufficient.
How this Treaty enters into force
This Treaty shall enter into force three months after the 15 states or international organizations deposit instruments of ratification or accession to the agreement. Article 29 of the Treaty regulates who may become the member of this Treaty.
The following delegations signed the Design Treaty in Riyadh on November 22, 2024: Bosnia and Herzegovina, Central African Republic, Congo, Costa Rica, Cote d’Ivoire, Democratic People’s Republic of Korea, Gambia, Ghana, Lebanon, Morocco, Paraguay, Philippines, Federal Republic of Moldova, Sao Tome and Principe, Saudi Arabia, Sudan, Uzbekistan, Zimbabwe. All other countries, including Serbia, signed the Final Act.
The Riyadh Treaty on Design Law became the 28th WIPO Treaty.
