Pedrini & Benedetti patents firm

DESIGN

The expression industrial design is used to indicate the design (as a two-dimensional aspect) and the shape (as the three-dimensional aspect) of the products (in the broad sense, including the packagings, at one end, and assemblies thereof to constitute aesthetic formats etc), that can be protected when innovative, by registering a drawing-model. Regardless of the presence of the registration, the protection of the shape may also be attained by claiming protection based on the legal system through cases of slavish imitation within unfair competition protection, which however requires a particularly qualified degree of likelihood (somehow particularly slavish) in the imitation of the drawing/shape.

In addition, by also introducing industrial design works among the works protected by copyrights on condition that the former per se meet the creative and artistic value steps, implementing the community directives and community homogenisation of the right, created margins of ambiguity.

Thus, industrial design is also considerably complex, thus requiring the services specialised professionals like us as concerns freedom of execution of third part designs or inspiration thereof as well as regards direct protection.

Services Further information

Our firm offers the following professional services regarding filing, grant procedures and maintenance of industrial designs in Italy:

Appointment for in-depth analysis of the contents illustrated in the special section, strictly reserved and limited to the professional secret regardless of the completion of the process, the characteristics of the industrial design related to the specific subjective characteristics of the client as well as the objective characteristics of the invention subject of the specific case.

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Preliminary assessment on whether the registration ability requirements are generally met i.e. assuming that the novelty requirements are met (except in case of verification as provided for hereinafter).

Quotation for filing the application with estimation of the subsequent procedure.

Strategic assessment as regards the feasibility, i.e. costs/benefits as a function of the result with minimum expenses, for implementation as regards priority search for the preparation of fling the application.

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As regards the aforementioned, any priority search in collaboration with external firms exclusively specialised in patent search for preparing patent filing.

Alternative or simultaneous, priority search carried out in-house.

Possible drafting of the description and/or claims, if admitted and required or suitable, and processing the drawings and reference graphic reproductions (when not provided by the client) or adapting the drawn material to the filing requirements.

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Drawing application filing forms with reference to foreign countries, paying government fees and chamber of commerce fees, filing fees, issuing the clients certificates proving the filing.

Providing the client with the possible documents forwarded by the Italian Patents and Trademarks Office, regarding the illustration, remarks and undertaking the ensuing operative determinations for executing the procedure.

At the same time, if the client plans international extension of the registration application, illustrating to the client the international extension institutions, as well as filing and procedure expenses quotation.

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Institution choice assessment (international registration at the WIPO - World Intellectual Property Organization in Genève, Alicante Office for the Harmonisation of the Internal Market) and/or national registration for extension as a function of the contingent subjective and objective client needs.

Translation of description/claims where applicable, in the required languages according to the country of extension and according to the contingent local laws.

Drawing application filing forms with reference to foreign countries, payment of filing fees, directly or through due authorities, where deemed necessary or suitable as well as providing the client with the certifications proving the filing thereof.

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Managing examination procedures, examination and study of the official actions issued by the examiners, information and illustration to the Client, consulting the client as regards strategies and contents for the response, drafting and filing responses with administration and possibly relative tax compliances.

Meeting requirements for preparing grant of patent certificates upon meeting requirements and paying relative taxes.

Sending, to the client, the deadlines provided for by the due laws in due time alongside the relative reminder as concerns payment of renewal fees.

Paying renewal fees in Italy and abroad, after deadline reminder and upon the client's orders.

 

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Model/design series, or multiple application

A rather important distinctive characteristic of most national and conventional designs/models registration procedure lies in the possibility of requesting the registration of a plurality of designs/models (even unlimited at times but subject to increase of fees as a function of the number, usually part by part), as long as they fall within the same international classification class of designs and models granted under the 1968 Locarno agreement (approximately as long as they have category uniformity as concerns the function/destination to meet human needs). Some national legal systems (such the People's Republic of China, which is of most interest to us) instead require filing a specific independent application for each design/model subject of registration application.

 

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Validity requirements

The design/model registration validity (as well as the design/model in a multiple document, without failure of one of them to meet the requirements affecting the validity of the others) is conditioned by meeting the law and regulatory requirements; these requirements are:

  • the novelty step › equivalent to the condition that something similar to the object of the design/model has never been disclosed anywhere on earth prior to the date of filing of the registration application. The rigidity of this of his requirement is softened, as regards designs/drawback, by a twelve-month regime granted to the client, according to which the disclosure of the object/s of the registration application carried out over the twelve months prior to the filing of the application does not affect the novelty requirements.
  • Uniqueness step › somehow comparable to an inherent novelty step. This is parametered both by the Italian Legal System, as well as the Regulation n° 6/2002 EC dated 12 December 2011 regarding community designs and models (see community design/model grant hereinafter), in terms of presence of grounds in the sense that where there is the general feeling that the design model creates in the informed user (ideal reference subject, substantially corresponding to a consumer fictitiously deemed to be aware of all creations in the examination reference sector), differs from the general feeling roused in this user by any design or model disclosed prior to filing the registration application subject of examination. In terms design/model validity requirements, it should be observed that though the ornamental aspect which used to condition validity of grant of the ornamental model patent is no longer there, there still remains the invalidity of the registration of designs/models regarding the characteristics solely established by their technical function or need for structural connection to other pieces.

The presence of validity requirements in the designs/models subject of the registration application is not subject of verification in most of the national and conventional registration procedures, thus remaining subject to the applicant's conditions, except for verification by the due Legal Authorities as concerns potential oppositions.

 

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Scope of protection

As concerns the scope of protection conferred by the registered designs/models, it is obviously symmetric to the relative validity requirement; actually the exclusive rights conferred by the registration of a design or model extend to any design or model that does not create a different general idea in the informed user (the same ideal subject mentioned above)a.

 

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Duration

As mentioned above, design/model registrations have a maximum duration of twenty-five years from the date of filing of the relative application (priority where applicable, see hereinafter) and they are subject to payment of a renewal fee every five years.

 

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The territoriality

The common characteristic of the designs-models registered under any national and supranational conventional legal system lies in Territoriality, i.e. the active validity of the designs/models exclusively on the due territory of the legal system that grants the registration, or the supranational organisation which is conferred the authority to execute the registration procedure, with reference to the territories of the member countries. The concept of territoriality is supplemented by the need of taking model/design registration initiatives in several countries / legal systems / supranational organisations, where the needs and/or registration opportunities go beyond the boundaries of a single country.

Thus, the principle of territoriality, after taking decisions and initiatives required for the constitution of the document according to the validity requirements, the policy to conceive the extension of the document capable of attaining the best result with the minimum expense. In addition, it should be capable of meeting the validity requirements of the reference national and supranational legal systems in that besides those mentioned above as regards the Italian Legal System and the EC regulation n° 6/20002 dated 12 December 2011 of the council as regards community models, the validity requirements may vary as a function of the designated countries through supranational conventions or filing directly in loco. We offer all these services, as outlined in the dedicated section.

 

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Disclosure

It should be observed that designs/models are published (made accessible to the public) immediately upon registration of the application. Failure to exercise priority rights, or at least failure to extend the application in other countries prior to the expiry of the annual period granted to the applicant, has devastating effects for the novelty step requirement of the subsequent applications (see relative section).

 

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Priority right

Functionally to this need the Paris Convention for the Protection of Industrial Property, also referred to as the Paris Union Convention which executes the Priority Right was signed in 1983. According to this convention, the individual or legal entity owner of a design/model registration application (which also applies for invention patents, utility models and trademarks; see relative section), a citizen of one of the member countries (substantially all countries worldwide are currently members of the Paris Union Convention), has six months as from date of filing the first registration application to extend the application, i.e. file similar ones, in any (one or more) of the country members of the convention. In addition, the effects of these similar applications (of this type of applications) are valid as of date of filing of the first one, the initial application, thus the so-called priority.

 

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International Model / Design

The 1925 Hague agreement on the international registration of the designs/models, with the various revisions, allows a single registration application valid in all designated member countries to those already owning a registration in the member countries (and even those who do not own any, where due reviews have been granted) - currently sixty-one from all continents - to file through national offices or directly at the Collection Organisation represented by the WIPO - World Intellectual Property Organization) in Genève.

 

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Community model / design

The European Union Convention which grants the community designs and models (EC n° 6/2002 dated 12 December 2011 of the Council on community designs and models) allows communitarian and extra-communitarian legal entities to file one registration application at the Community Collection Organisation, represented by the Alicante Office for Harmonising the Internal Market in Spain and attain one registration document valid over the entire European Union.

 

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Design: Registration as a model / design and Copyright

With the aim of better understanding the current outlining of the institution, it should be observed that in the past the Italian legal system, as regards industrial design, did not allow combining registration with copyrights. With respect to the industrial law, copywriting is another branch of intellectual property. Actually, it protects artistic intellectual creations (actually an incorrect definition, but suitably approximated in terms of disclosure, see relative section).

The major difference between the two branches of the intellectual property, industrial property on the one hand (including patents and registrations) and copyrights on the other (including protection of artistic works), lies in the fact that while as regards the organisations granting industrial property rights it is generally necessary that the a patent or a registration of the innovative object to obtain the protection thereof, within copyrights, the protection arises automatically with the creative conception (except for issues regarding the proof of this). In addition, it has an extremely long duration (the entire life of the author and sixty years after the death thereof).

In this context, it can be easily conceived that, as regards industrial design, though generally maximalist, the Italian law conferred the owner of the right and the competitors thereof certainties in that the aforementioned owner could rely on the fact that the non-registered design, or expired registration, could be freely taken over. By introducing industrial design works amongst the works protected by copyrights, on condition that they "per se have creative character and artistic value", executing the community directives and community law harmonisation, revealed margins of ambiguity in that the artist can often argue that a given design per se "has a creative character and artistic value", thus often it cannot be proven whether a design or model are worth protecting or free to be implemented in that it is often difficult to establish whether it per se has "the creative character and artistic value", in the absence of unambiguous indicators. These indicators are often achieved over time and they are usually constituted by the affirmation taken away from the obsolescence of the times, i.e. acquisition of the "classic validity" and paradigmatic assumption.

In addition, there is the simultaneous existence of the "shape trademark" or "three-dimensional trademark" (see relative section), which leads to the possibility of a shape to be claimed or be granted a distinctive characteristic, should there be grounds for a distinctive sign validity and thus be used and registered as a generally unlimited protection.

Even where allowed by the commodity class, the general existence of works "per se having creative character and artistic value", it is unadvisable to rely on the protection that can be granted by copyrights or the protection of a new design, considering the controvertible character of the presence of the aforementioned "creative character and artistic value" in the absence of indicators that may can only be conferred or corroborated over time. Though it is suitable to register a design as a design/model the duration of the relative registration, twenty-five years overall, is such that - upon expiry of the registration - if the model still has a commercial value, this can be deemed to indicate the actual possibility of the design being granted the almost if not absolutely unambiguous "creative character and artistic value".

 

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