In this blog post, leading Design Law Professor Sarah Burstein argues that the negotiating draft of the WIPO Design Law Treaty contains a little noticed provision, buried in its “regulations,” that attempts to harmonize a key area of disagreement across jurisdictions on “perhaps the most basic question of all:  What counts as a ‘design’?” The issue is contained in Rule 3(2)(i), which states: “[T]he representation of the industrial design may include . . . matter that does not form part of the claimed design if it is identified as such in the description and/or it is shown by means of dotted or broken lines.” The rule is modeled on a practice in the U.S., which is not included in the U.S. design law statute, of allowing applicants to use so-called “dotted lines” to visually disclaim part of a larger design. Adoption of this rule would have the effect of broadening the scope of protection in design law around the world because it may allow infringement actions even if the accused product is a visual match only with respect to part of a design. 

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Disclaiming Designs

Sarah (Fackrell) Burstein
Professor of Law, Chicago-Kent College of Law 

Among the many areas where substantive design law is not currently harmonized across jurisdictions, one area of disagreement pertains to perhaps the most basic question of all:  What counts as a “design”?  

For example, an applicant might be allowed to claim just the shape of a product or article, like U.S. Patent No. D700,412, which claims a design for a hedgehog-shaped dryer ball: 

Or the applicant might be allowed to claim just a surface design, like U.S. Patent No. D696,521, which claims a surface design for fabric: 

Or the applicant might claim a combination of shape and surface design, like U.S. Patent No. D700,687, which claims a design for a leopard-print grab bar: 

Explaining the dotted lines issue

Not all jurisdictions require an applicant to claim the product’s whole shape, surface, or combination design.  

One such jurisdiction is the United States. The U.S. Patent & Trademark Office currently allows a design patent applicant to use broken lines (or other visual conventions) to visually disclaim part or parts of a larger design.  

This has the effect of broadening the scope of protection. That is because the test for infringement requires that the accused product be a visual “match” only with respect to the claimed design. If I only claim one small part of a design, that’s the only part that must look “the same” in the accused product. (For more on the U.S. design patent infringement test, see this forthcoming article. For additional examples of broken-line claiming, see this article.)  

The ability to broaden the scope of their claims is obviously attractive to design owners. But it’s not obviously good policy.  

(And in the United States, it’s not even obviously the correct interpretation of the Patent Act. The current law and practice in the United States with respect to broken-line claiming can be traced back to the U.S. Court of Customs & Patent Appeals’ 1980 decision in In re Zahn. As I explain here, Zahn was poorly reasoned and should be overruled.) 

Impact on global design law

Given the divergence in international practice on this issue, it is not surprising that the United States’ proposed Rule 2(3)—“A Contracting Party shall permit the application to be directed to a design embodied in a part of an article or product”—has met with resistance. 

Yet draft Rule 3(2)(i) states that: “[T]he representation of the industrial design may include . . . matter that does not form part of the claimed design if it is identified as such in the description and/or it is shown by means of dotted or broken lines.”  

This could potentially be read as a back-door requirement that contracting parties allow partial claiming. After all, this language sounds very similar to the language that the USPTO requires applicants to use to describe drawings that use broken-line disclaimers. See MPEP  § 1503.02(III) (“Unclaimed subject matter must be described as forming no part of the claimed design….”). That would be a substantive rule, not a procedural one. 

Theoretically, draft Rule 3(2)(i) could be read in a more procedural way—perhaps as indicating that a contracting party could not reject an application for including a disclaimer but the relevant authorities could still interpret the scope of the claim according to their own substantive laws. In other words, perhaps the command is meant to be something more like:  Give them their broken lines but you don’t have to give those broken lines any legal effect. 

To the extent that the contracting parties wish to retain their sovereignty with respect to defining what constitutes a “design”—and, specifically, their ability to decide whether to allow partial claiming—they may wish to carefully review the language of draft Rule 3(2)(i) and make sure its meaning and effect are clear. 

Impact on US law

This draft language could also be read as requiring a major (and deleterious) change to U.S. design patent law and practice.  

Currently, an applicant for a U.S. design patent can visually disclaim a part or parts of a larger design (as discussed above). But they cannot verbally disclaim any part of a design. This reflects one of the most basic and fundamental principles of contemporary U.S. design patent law and practice:  The claimed design is what is shown in the drawings.  

To the extent that Rule 3(2)(i) would require contracting parties to allow disclaimers “in the [verbal] description” of the design and to give those disclaimers substantive effect, it would upend this basic and settled long-settled principle. That would fundamentally disrupt settled law and practice with respect to issues like design patent claim construction.  

Allowing verbal disclaimers would reduce the clarity of design patent claims because, as the en banc Federal Circuit has stated over and over, “a design is better represented by an illustration.”  

This is not a hypothetical concern. Based on the practical difficulties that lawyers and judges have had in trying to translate visual designs into words, the Federal Circuit has ruled that such translations are not required during claim construction (in Egyptian Goddess v. Swisa) or when analyzing obviousness (in LKQ v. GM). We have tried the verbal description route before and it has failed. There is no reason to think that verbal descriptions would be less problematic in the context of design disclaimers. 

Therefore, the United States (and other contracting parties) may wish to carefully consider the practical and doctrinal impact this draft language could have on their design law beyond just the application stage.