The requirements of form and function

26-05-2017

The requirements  of form and function

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Industrial designs in Mexico do function well, but applicants must be clear on the rules surrounding subject matter eligibility, as well as other issues, says Octavio Espejo of Becerril, Coca & Becerril.

Industrial designs in Mexico do function well, but applicants must be clear on the rules surrounding subject matter eligibility, as well as other issues, says Octavio Espejo of Becerril, Coca & Becerril.

It is well known that the rules for protecting industrial designs vary around the world. The specific role of functionality of the design features is not an exception.

For the purpose of this article, functionality should be understood as the possible technical function involved in a design feature, for example, the round shape of a wheel, or the spherical form of a ball bearing. These particular features could be considered as non-arbitrary contributions of the designer, that is to say, technical quality for the design. In some jurisdictions, they could be excluded from the granted right.

The Industrial Property Law (IPL) regulates industrial designs in Mexico. The protection granted to an industrial design application is a registration valid for a non-extendable 15-year period starting from the filing date of the application. The Mexican Institute of Industrial Property (IMPI) is the office in charge of substantively evaluating and granting industrial designs.

Article 31 of the IPL establishes the basic requirements to obtain an industrial design. It explicitly excludes from eligibility “those elements or features that have been dictated solely by technical considerations or by the performance of a technical function, and which do not embody any arbitrary contribution on the part of the designer”.

On the other hand, article 32 requires that the design features must give to the industrial product a special appearance. Consequently, the Mexican IPL has a positive provision requiring aesthetic features in this article and a negative provision excluding technical features in article 31.

The spirit of conferring a right under the industrial design area is to protect the aesthetic characteristics of the design that give an industrial product its specific appearance.

It is important to consider that the technical features that could constitute an invention related or not to the specific design may be protected through a Mexican patent (a utility patent, as known in the US, or simply a patent in other jurisdictions) or through a utility model.

Determining functionality

There are some tools to determine if a design feature is solely directed to functionality or to technical features. The ‘multiplicity of forms’ theory consists in the idea that if the design element could have multiple forms in order to confer a specific appearance to the industrial product, the arbitrary contribution of the designer is evident and consequently the feature is not solely directed to a technical function.

The Mexican legislation does not contemplate a specific test for the evaluation of the technical features of an industrial design application, during the substantive examination or at any other step of the process, which could lead the examiner to the rejection of certain features of the design or the whole design from protection.

In practice, if the Mexican examiner determines that the industrial design is ineligible in view of the fact that it contains technical features, an objection will be issued requiring the applicant to limit the claimed design only to the aesthetic features.

To respond to the objection, it is possible to limit the scope of the claimed protection in the drawings and/or in the description through a disclaimer. However, it is also possible to argue in favour of the aesthetic features of the elements, which could also have a technical purpose on the product.

The possibility of success of that kind of argument would depend on the possibility of solving the technical problem through other technical means and consequently that the election of the challenged elements does involve a special consideration or an arbitrary contribution from the designer which gives the product a specific appearance of its own.

In a case in which the multiplicity of forms theory is not sufficient to demonstrate the eligibility of an industrial design as a whole, the conclusion is that the object of protection should be pursued through a patent application or a utility model application. It is possible to transform the design application into any of those either voluntarily, within the three months from the filing date, or in response to a request from the patent office at any time.

If industrial design protection is desired, and some of the design features can indirectly relate to technical features, it is very useful to consider that the claim in an industrial design application should read “as described and illustrated”. In that way, incorporating disclaimers in the description of the application could be a solution in order to focus the evaluation of the scope of protection to the arbitrary contribution of the designer in order to give a product a specific appearance.

Likewise, partial designs are allowed in Mexico. The usual practice is to use broken and solid lines to illustrate their unclaimed and claimed portions. It is also possible to use colours to exclude certain parts of the design from protection.

There are some other tools such as the aesthetic consideration test, the consumer consideration test and the multifactor test, which could also help in the determination of eligibility of the subject matter.

Multiple protections

It is possible that a single development may comply with the requirements for patents or utility models in view of the technical features incorporated into the state of art in order to solve a specific technical problem, and for having a specific aesthetic contribution by the designer that gives the product a specific appearance of its own.

In this case, protection from the technical and design points of view could be achieved. The Mexican law does not prohibit pursuing protection for the same development through a patent or utility model and through an industrial design at the same time. However, there are some considerations to bear in mind.

Protection is granted by a patent or utility model registration, and an industrial design registration (according to article 25 of the IPL). That gives the exclusive right to prevent others manufacturing, using, selling, offering for sale or importing the patented/registered product without the consent of the rights owner. Nevertheless, the validity of the right is 20 years for a patent, 15 years for an industrial design and ten years for a utility model.

Considering that a single industrial design registration may protect multiple embodiments of the design without increasing prosecution or maintenance costs—with the proviso that the different embodiments should constitute a single design concept complying with the unity requirement—the designer may include different embodiments with a specific combination of features.

The features compromised for being technical could be shown in broken lines excluding them from the scope of protection.

Litigation

The possible strategies to defend an industrial design that could be challenged on functionality grounds during litigation depend on the subject matter protected. As stated before, article 31 of the IPL restricts the protection where the appearance of the product consists solely of technical elements.

The first argument to defend the eligibility of the elements of the design could be based on the arbitrary contribution of the designer to the product that illustrates some of the different alternatives that the designer could have had to create similar products. Thus, the multiplicity of forms theory may also be applied at this stage.

If as a result of the litigation it is resolved that some elements of the design are dictated solely for technical features and could not constitute eligible matter, it is important to consider that the Mexican law contemplates that the nullity of a register could be partial. Further, the nullity could be declared as a limitation or a precision in the corresponding claim.

As for the arguments from the challenger or accused infringer, they should be based on the fact that the technical features of the design are the essence of the contribution of the designer, and that those features are not eligible in view of article 31 of the IPL. Depending on the case, it is possible that a partial nullity would be impossible and the consequence would be the total nullity of the register.

Final thoughts

Mexican industrial designs do have a role. However, the design features dictated solely for the functionality of the related element constitute ineligible subject matter. The multiplicity of forms theory is an important tool to argue in favour of the eligibility of an industrial design in Mexico. Nevertheless its applicability depends on the specific design.

The spirit of the protection granted to an industrial design is related to the aesthetic design features that were arbitrarily defined by the designer. Any technical contribution should be protected through patents or utility models.

Octavio Espejo is an associate at Becerril, Coca & Becerril. He has a degree as a mechanical-electrical engineer and as an attorney at law, which he applies as administrative patent manager. Espejo has been recognised as a patent leader by WIPR in 2017. He can be contacted at: vespejo@bcb.com.mx 

Octavio Espejo, Becerril, Coca & Becerril, industrial designs,

WIPR