Guest Post: Industrial Designs – the Wonder Weapon for the German Blitzkrieg?

PatLit is part of a family of excellent IPKat blogs created by UK attorney Jeremy Phillips. As you might guess, the website has a European focus, although not exclusively so. In a recent post, Michael Thesen wrote about the ongoing patent litigation between Samsung and Apple – with a focus on a German preliminary injunction based upon a European Design Registration. The following is reproduced with permission.

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IgunA preliminary injunction granted on the request of Apple for preventing the sales of Samsung's Galaxy Pad in most of Germany has recently caused a fairly big swivet in the IP community. This 1st instance case, featuring an industrial design and a defendant citing somewhat flimsy evidence, has even found its way to the hall of fame of "patent wars" in minimum time.

What is surprising from a patent litigator's point of view is how simple this is. How is it possible that a preliminary injunction is granted based on an unexamined right? [DDC Note: Unlike US Design Patents, Europe Design Rights are registered without substantive examination.] 

As everywhere, the decision to grant a preliminary injunction requires a careful balancing of the right owner's interest in preventing damages of irreparable nature and the defendant's interest in a fair procedure. For any kind of protective right, doubts in the validity and doubts in the question of infringement will lead to a refusing decision in order to safely avoid erroneous judgments due to precipitate action. 

In patent matters, even a successfully completed examination procedure is not necessarily sufficient to prove the enforceability with a sufficient degree of certainty (at least in Germany). Rather, additional conditions have to be met. In the case of unexamined utility models, the burden of substantiating the enforceability is at the plaintiff's side, which must produce at least the results of a professional search carried out on the subject-matter of the utility model or a positive decision of an invalidity procedure.

Nothing of this kind can be found in the judgment of the Düsseldorf court – the reason being fairly simple: the validity is legally presumed in Art. 85(1) of the Community Design Regulation (CDR), i.e. the court has to treat the community design as valid. This legal presumption may be challenged by way of a counterclaim. However, this shifts the burden of proof/substantiation to the defendant's side. The applicability of Art. 85(1) CDR to interim relief has been questioned, but is generally accepted as far as the author of this note knows.

In practice, the short time scale of procedures in interim relief, the lack of search possibilities comparable to those available for patents and utility models and an official search result to start with leaves the defendant defenseless. This has a further crucial effect on the question of infringement because the defendant has practically no possibility to substantiate the existing design corpus such that the judge has to presume a high degree of freedom of the designer and thus a large scope of protection (cf. Art 10(2) CDR).

Further, the Hagen District court holds that the damages caused by infringements of industrial designs are more likely to be of irreparable nature as compared to patents because the industrial value of the former lies primarily in its individual character, which would be "diluted" when admitting counterfeits during the procedure of the merits, whereas the value of the patent basically lies in its technical advantages which are, as such, not affected by counterfeits on the market.

In particular in the world of telecommunication patent wars there is one further feature of industrial designs which makes them frightening weapons: they are not essential for standards and, thus, not subject to FRAND agreements. As a matter of course, there is no way to obtain interim relief against a global competitor on the basis of a standard-relevant patent. 

In other words, you need not bother with being fair, reasonable and non-discriminative when using industrial designs.

The result is that industrial designs are tools which are largely underestimated in the portfolio of most of the IP right holders. Design rights are not expensive, powerful, can be enforced rapidly, easy to understand even for less experienced judges or customs officers, not susceptible for translation errors even in China, and deserve a decent fraction of every company's IP budget.

The original post can be found here: http://patlit.blogspot.com/2011/10/industrial-designs-wonder-weapon-for.html

36 thoughts on “Guest Post: Industrial Designs – the Wonder Weapon for the German Blitzkrieg?

  1. 36

    I just have come here by accident. The apple-gun is funny and I always enjoy Americans saying Blitzkrieg. The recent design patent struggles against Samsung and the Apfelkind (just google) case did really cost Apple German sympathies among even fan boys but possibly it will recover. The German term Patent is only used for technical inventions and kind of old school diplomas, so the audience is always confused about US Design patents,we also don’t know software patents, as you know, Even though just all big Apples, Googles, Windows and Facebook come from America, the general public now daily says across all the web that the US patent system must be located in stone age or something, I just mean the mood in general public who reads that there are more new lawsuits than mobile phones these days. :-)

  2. 35

    “fatuous”?

    You have lots of suspicions, perhaps Dr. Freud can help you.

    As far as taking “another pop at” you, I am shocked, I am merely here to learn, and I was just pointing out that it was difficult to understand if you were actually saying something.

    Are you saying something?

  3. 34

    You mean I really did answer your original question, twice? I had no idea what you wanted. At first sight it struck me as flippant and not worth answering. Then I thought about attempting something straight about how “potent” is the right given by an EU RD, and how quickly and cheaply a designer can acquire that particular registration right.

    And along the way, I suspected that the answer you wanted was anything that would give you some excuse to have another pop at me. Your fatuous response to my first answer confirms my suspicion.

  4. 33

    There I go again, struggling to understand your answers MaxDrei.

    Perhaps we could avoud this “all over again” stuff if you were more direct in your answers, rather than fluffing them with questions…

    …just a thought.

  5. 32

    The EU RD owner who gets his injunction got what he paid for. He would have paid 50 times the price, to get that result. The man who is refused his injunctive relief, by contrast, might feel that the EU RD wasn’t worth what he paid for it.

    I think that answers your “get what you pay for” question, all over again.

  6. 31

    You haven’t answered the question MaxDrei.

    I thought that you were going to try to be less of a nuisance? Asking a question in reply to a question is a bit of a nuisance, no?

  7. 30

    To answer anon’s nice question, readers, that might depend on whether or not you got the injunctive relief you were asking for (from infringement throughout the 27 countries of the EU).

    The EU RD is what one calls an “unexamined right” so it has only a weak presumption of validity (but to compensate, at least it issues withing a short few weeks of asking for it). The main thing is, it does set you up to ask the court to enjoin the infringer all over the EU. How would you like it, manufacturer, if you were to receive a Cease and Desist letter based on an EU RD.

  8. 29

    And you are not wasting any time making declarations of a losing nature.

    Me personally, I would not post in the first place if I were to simply abdicate so quickly.

  9. 28

    To be “less of a” is not the same as to “not be a“.

    In fact, the two call for very drastically different actions.

  10. 26

    Ned think of EU UDR as a species of copyright. Think of an EU RD is a 25 year patent enforcible in 27 countries. Do you want one? They are dirt cheap.

  11. 25

    You know, it’s never too late (even for you, Shilling) to resolve in future to be less of a nuisance. There’s still time, even for you.

  12. 21

    If new designs are protectible upon simple registration without examination, it seems registration is a mere formality. Perhaps this formality should be done away with.

  13. 19

    Is that the same as you declaring yourself the loser again?

    It’s getting hard to tell the difference.

  14. 18

    Sorry, no. I see no need to try again. Our readers might well think that this is beginning to get boring. I don’t want to be a nuisance to anybody, or to be told I’m spouting nonsense.

    If you want to know more, there’s a good English case you could Google or bailii. P&G vs Reckitt Benckizer if I remember rightly. You like reading English Decisions don’t you.

    Meanwhile, you can declare yourself the winner again if you like.

  15. 17

    Sorry MaxDrei, your explanation falters – it is not the word “and” that lacks understanding – it is the items of either side that do not differentiate that falter.

    Try again. Please. Do.

  16. 16

    Bare novelty is not enough. Which part of the word “and” do you not understand?

    There has to be some individual character attaching to the subject matter of the registration. Think of it as the designs equivalent of what we call non-obviousness for utility patents. You rate that character by reference to the background of the designs that were already there. You weigh infringement by asking whether the accused embodiment has taken that individual character.

  17. 15

    Why else did I not challenge you on your “different novelty” statement. Yes, I knew.

    Whereas 20 year utility patents are as likely to have a foreign applicant as a domestic one, that’s not so, with utility models and design regns, where local applicants dominate.

    I suppose European politicians thought this would also be the case, with the new pan-European Reg Des regime. Bad luck then, for domestic Euro industry, if the Americans and the Asians use EU Reg Des system more diligently than the locals, and themselves exploit the less than absolute novelty provisions to their advantage in Europe.

    But is this “abuse”? Flip, the UK used to have local novelty and “communication inventions”, patents for technology unknown in the homeland, but brought to it by intrepid world travellers, to promote the progress of useful arts in the UK. Funny how the world once was.

  18. 14

    Max,

    It is not just non-obviousness: I don’t know if you are aware of this, but in the spiritual home of the utility model, Germany, and in many countries whose patent laws have been inspired by Germany, most notably China, an unwritten disclosure or public prior use, even by a third party, is not considered prior art for utility models, if it only took place abroad. I don’t need to paint a picture of how this can be abused, even in front of strict courts. (Although China appears to have corrected this egregious flaw in its latest revision of its patent law.)

  19. 13

    Does this mean that as long as it is somehow different, that there has been a “contribution”? Isn’t this then the same thing as “novelty”? And thus, have you not then defined a term with its own definition?

  20. 12

    I can feel as they started to cut me in half,
    and then they would share in the Drink.
    They’d have them some Milk, they’d have them some cheese,
    while the Cow they would say couldn’t think.

  21. 11

    Is it a criticism of utility models that they are “open to abuse”? Can’t the courts stamp on any attempts to abuse? Germany used to set a lower hurdle of non-obviousness but it has given up on that hair-splitting notion. It’s all the same standard now, regardless whether the utility patent in suit is a ten year lite job or a full twenty year heavy.

  22. 10

    When discussing obviousness in the context of utility patents, one can discuss the notion of a “contribution to the art” till the cows come home. But with design registrations, the contribution is simply the novelty and the individual character of the design that’s registered.

  23. 9

    Also, I wonder if you may not be conflating industrial design rights and the confusingly-named utility models, which are in fact short-term utility patents, granted in many European (and Asian) countries without substantive examination and having lower requirements of novelty and inventive step for validity. While they are defended as low-cost alternatives to full-blown utility patents for individual inventors and SMEs, it is true that they are open for abuse.

  24. 8

    Dear Paul,

    There’s nothing particularly “new” about those limitations, which go back at least to the the Directive which harmonized industrial right protection throughout the EU back in 1998. As I say, you might be thinking of the longtime debate concerning external spare parts such as body panels, bumpers, headlights or wing mirrors. With the current legislation, national or Community design rights on such parts may be enforceable in some European countries (which, coincidentally, happen to be those with a strong domestic car industry). While many people, including the European Commission, which is the EU’s executive body, have been calling for an end to protection of such apparent spare parts, those same countries have kept blocking any initiative in that direction at the EU Council.

  25. 6

    Paul you make it sound as if imposition of an obviousness test to registered design rights will enhance legal certainty. I beg to doubt it. You realise that, in the European statutory scheme of registration rights, the scope of protection depends on the proximity of the closest prior art and the degree of “design freedom” that was available to the author of the design that has been registered, and that the test what is patentable is the same as the test what infringes (so, if the accused embodiment is closer to the registered design than is the closest prior art collection there is likely to be infringement, otherwise not). Is there really so catastrophic an absence of legal certainty in Europe, and so much more legal certainty with US design rights? Are you sure? Is the scope of protection given by a US design patent like that in Europe, always commensurate with the size of the author’s contribution to the art?

  26. 5

    P.S. I’m not suggesting that the U.S. design patent system does not also have its own problems, including examinations, some enforcement abuses, and confusions by courts.

  27. 4

    Thanks for the above current information, but yes I still think its a bad non-patent non-examination system having patent dangers and consequences without the obviousness tests or a real patent, and without claims defining the scope of infringement. As the preliminary injuction report this thread is about further demonstrates.
    The above newer limiting regulations are nice, but somwhat academic since there is no examination for them before granting enforcable rights. Furthermore, even if is was, could not “visible during normal use” covers normal use by owners or garage mechanics opening the hood of a car, making all the visible items on the outside of the engine visible? Regularly opening a copier front cover to put in fresh paper? etc. And, as you admit, it allows all to easy visible spare parts monopolization, with a very low to non existant standard of unobviousness, and othe requirements, unlike a U.S. design PATENT.

  28. 3

    So, to summarise, here are things that render machine parts ineligible for EU Design Registration:

    1. shape dictated by function

    2. Must fit or must match design features

    3. Parts not visible during normal use of the machine

    4. LEGO-brick type systems.

    Still angry Paul?

  29. 2

    Even otherwise unpatentable ugly looking internal machine or auto parts, which have to look that way to fit in, can be protected by mere industrial design registations to monopolize the entire replacement parts market.

    Actually, no, they can’t:

    COUNCIL REGULATION (EC) No 6/2002

    Art. 4.2:

    A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
    (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and
    (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

    Art. 8:

    1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.
    2. A Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
    3. Notwithstanding paragraph 2, a Community design shall under the conditions set out in Articles 5 and 6 subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.

    There has long been debate about external spare parts, in particular external car body parts. The EU has so far left it to the member states to decide whether they are enforceable or not in their respective territories, although the European Commission has strongly recommended to exclude such spare parts from eligibility for Community design protection.

  30. 1

    Objections to the unreasonableness and bad public policy of European industrial design protection has fallen on deaf ears for years. Even otherwise unpatentable ugly looking internal machine or auto parts, which have to look that way to fit in, can be protected by mere industrial design registations to monopolize the entire replacement parts market.

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