WIPO Adopts First Design Law Treaty
In Short
The Situation: After nearly two decades of negotiations, the Member States of the World Intellectual Property Organization ("WIPO") adopted the Riyadh Design Law Treaty, which aims to harmonize design protection procedures in countries around the world.
The Details: The Riyadh Design Law Treaty intends to make design registrations and design patent applications throughout WIPO's 193 Member States more predictable, simpler, easier to file within different international jurisdictions, and more affordable.
Looking Ahead: The Treaty will enter into force three months after it is ratified by at least 15 Contracting Parties. Prospective design applicants should prepare for countries in which they may seek design protections to enact the Treaty's provisions.
On November 22, 2024, WIPO announced that its Member States adopted an international design law treaty in Riyadh, Saudi Arabia. The Riyadh Design Law Treaty and its Regulations will enter into force three months after at least 15 Member States or intergovernmental organizations ratify it, which, based on previous WIPO treaties, takes about two to five years. If ratified, the Treaty will govern and set standards for design protection throughout all Contracting Parties.
The Treaty aims to standardize the design application processes of WIPO Member States involved in protecting industrial designs, including design patents and registered designs. Such uniformity should aid design applicants in patenting or registering their designs not only within their home jurisdictions, but also in other jurisdictions where they seek design protection. The Treaty will affect all prospective design applicants, and it also specifically contemplates improving the efficiency of design registration processes for micro, small, and medium-sized companies.
Some notable provisions that WIPO Member States have adopted within the Treaty and its Regulations include:
Timing
- Streamlining the prerequisites for according a design application filing date to only specifically listed indications and elements (Article 6(3));
- Creating a 12-month grace period for a design's disclosure before an application's filing date or its priority date without sacrificing the design's validity (Article 7);
- Creating a six-month post-filing date period for keeping design applications or registrations unpublished (Article 10(1); Rule 6); and
- Providing for more-lenient time extensions for applicants who miss certain filing deadlines (Article 14; Rule 10).
Application content
- Deferring to applicants in terms of how they represent their designs in their applications, including form, color, shading, and unclaimed features (Rule 3);
- Permitting applications to include more than one design (Article 4(4); Article 9(1)); and
- Streamlining renewal procedures (Article 13; Rule 9).
Design context
- Allowing Contracting Parties to require applicants to provide "information on traditional cultural expressions and traditional knowledge, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design" (Article 4(2)).
WIPO technical assistance
- Establishing that WIPO will provide "financing for technical assistance and capacity building for the implementation of the Treaty" (Article 24(2)(b)); and
Greater access to WIPO's digital design libraries (Article 24(3)).
Three Key Takeaways
- Keep an eye out for ratification. Once the Treaty comes into force, design applicants can take advantage of the Treaty's attempts at improving and streamlining design application and registration processes throughout the world.
- Plan and coordinate worldwide design protection strategy. Prospective applicants should plan on using provisions that permit for creative design protection strategies when applying for protections across multiple jurisdictions.
- Remember some jurisdictional differences remain. Applicants should still pay mind to individual countries' particular procedures because Contracting Parties are left some discretion under the Treaty in managing their design application processes.
