Design Protection Update: Riyadh Design Law Treaty

On November 22, 2024, World Intellectual Property Organization (WIPO) member states adopted the Riyadh Design Law Treaty (“Treaty”). This development is arguably the biggest advancement in international design law since 1999, when the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) was adopted.

Like the Hague Agreement, the Treaty aims to simplify and unify several different aspects of design law, primarily targeted at “streamlining procedures” and “facilitating protection” for designers.[i] In particular, the Treaty:

• Sets a minimum 12-month grace period for filing after disclosure – helping prevent design owners from losing rights in certain jurisdictions in “absolute novelty” countries, which currently have no protection for designs that were published or otherwise made public prior to filing an application in the jurisdiction.
• Allows several designs in a single application – the Treaty sets forth procedures allowing multiple designs to be filed for at the same time, rather than requiring separate applications for individual designs. However, the Treaty still allows for applications to be divided (e.g., by a “restriction” requirement in the U.S.),[ii] but ensures that the filing date for the designs are safeguarded if a divisional application is necessary.
• Broadens application mediums – by expanding the ways to represent the design using drawings, photographs and/or other visual media (such as videos) admitted by national industrial property offices, which is increasingly relevant for ornamental digital content including virtual and/or augmented reality displays, holographic designs, and other content that may not as readily be shown/claimed in blackline drawings.
• Ensures filing dates when essential items of application are submitted – protecting applicants by allowing a filing date to be honored even if a complete application is not submitted to an industrial property office.
• Ensures designs remain unpublished for a minimum of 6-months after filing – allowing applicants to control the publication date of a design while also securing a filing date, which may be useful for applicants who want to register protection before public release of an ornamental design (where many jurisdictions publish on or very soon after the filing date).
• Unifies Filing and Post-Grant Requirements – by clearly defining all indications or elements that may be required in an application, as well as requirements for post-grant activities such as recording transactions, renewal, licensing activities, or a change in ownership.
• Enacts “revival” measures – the Treaty includes relief measures for those that miss deadlines at industrial patent offices, helping design owners to avoid losing their rights.

The Treaty is established in a two-tier structure – consisting of the “Articles,” and the “Regulations.” The Regulations can be amended by the Assembly of the Contracting Parties, “thereby fostering a dynamic framework within which to further develop design law.”

Many of the provisions of the Treaty are very similar to what is already in place in the United States, such as permitting partial applications to ensure a filing date, a grace period, revival measures (under certain circumstances), and the delay of publication of applications after filing. However, some of these requirements could be new. For example, the United States still does not allow for prosecution of patentably distinct designs under the same application, and generally limits design mediums to black and white line drawings, with limited exceptions for inclusion of colors, and exceptionally limited exceptions for inclusion of photographs.[iii]  The Articles are also clear in stating that the Treaty is not “intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial design as it desires.”[iv] Therefore, even with the unification of certain procedures, it remains to be seen how the United States Patent & Trademark Office (and U.S. courts) will interpret statutory requirements including “article of manufacture” applicants will still need to ensure that they are complying with local laws and should consult U.S. and local counsel on such matters.

It should be noted that the Treaty has not yet entered force – that first requires 15 contracting parties.[v] This could take a bit of time, especially in the United States. For context, efforts to come into compliance with the Hague Agreement were not enacted until 2015, nearly 16 years after the Agreement was adopted. Although there is no indication on the timeline for countries or intergovernmental organizations to become “Contracting Parties,” it can be expected that there will be some delays, at least in the U.S., because the Senate must ratify the treaty by two-thirds majority.[vi]  

The adoption of the Treaty is another step demonstrating the growing importance of industrial design in international IP protection. The harmonization of international utility patents led to an explosion of international applications. Although the current framework of industrial design is lagging, broad participation in the Treaty could lead to similar growth.

If you have questions, interest, and/or needs regarding the ornamental design appearance of digital or physical articles (including products, packaging, user interface items, and more), please reach out to one of the authors or others in our Crowell design protection practice team.