Sean Flynn and Luca Schirru

Last year, two new intellectual property treaties were adopted by the World Intellectual Property Organization — one on the disclosure of uses of genetic resources in patent applications and a second on applications for design law protection. Although the design law treaty was promoted by wealthy countries of the global north, the final outcome shows the impact of developing countries who advocated for deleting or softening provisions that regulated substantive design law while protecting the ability to require information related to Traditional Cultural Expressions (TCEs), Traditional Knowledge (TK), or biological and genetic resources (GR). 

Opening the closed list for application criteria 

The main intent of the Design Law Treaty was described as harmonizing procedures and formalities for applying for design law protection. There is very little substantive international law on design protection, and the treaty was not billed as creating such minimum requirements. However, by proposing to restrict the elements that may be requested in a design law application, the basic proposal for the treaty in effect restricted what elements could be considered in granting protection. 

The basic proposal for the treaty followed the Trademark Law Treaty in proposing a closed list of elements that could be required in an application. The closed nature of the list was made clear in subsection 2 of what was ultimately included as Article 4 of the treaty, which states: 

“[Prohibition of Other Requirements] No indication or element, other than those referred to in paragraph (1) and in Article 10, may be required in respect of the application.”

The problem with a closed list of application criteria is that it limits the substantive criteria that governments can rely upon in granting design law protection. As Bagley (2018, 995-996) argued: “by delineating a closed list of application requirements that countries can impose on applicants, the DLT in effect moves beyond formalities to placing substantive limits on countries in relation to design registration”.1

In the early stages of consideration of the Treaty, developing countries focused on the lack of language in the closed list allowing countries to require disclosure of traditional cultural expressions, traditional knowledge, or genetic resources used in the design seeking protection. The basic proposal for the DLT included two alternatives on these issues: 

“ALTERNATIVE A [(ix) a disclosure of the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design;]”“ALTERNATIVE B [(ix) an indication of any prior application or registration, or of other information , of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design;]”

During the negotiation, Knowledge Ecology International raised other issues that the United States and other laws require disclosure of in design law applications that were not included in the closed list. These included, for example, requirements to disclose uses of public funding and artificial intelligence in the creation of the design. 

There was considerable opposition from the “Group B” wealthy countries of the global north to the language in Alternative A including reference to “biological/genetic resources” in the permitted elements of an application. Delegations argued that such resources were not relevant to design law. 2

In the end, the compromise text excluded direct mention of genetic resources but adopted open language that permits countries to require any application element deemed “relevant” to the registration of the design:  

Article 4

…

(2) [Indication of Information] A Contracting Party may require, where permitted under the applicable law, that an application contain an indication of any prior application or registration, or of other information, including information on traditional cultural expressions and traditional knowledge, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design.

(3) [Prohibition of Other Requirements] No indication or element, other than those referred to in paragraphs (1) and (2) and in Article 12, may be required in respect of the application.

The final outcome thus permits countries to allow disclosures of genetic resource information as well as information about uses of public funding, artificial intelligence, and other elements that a country deems relevant to the registration. 

Eliminating Term of Protection

The basic proposal for the DLT included two options for requiring a term of protection. Term of protection is indisputably substantive, and many countries opposed its inclusion in the treaty on this basis.3 But two other treaties — the Hague Agreement and the WTO’s TRIPS agreement — have minimum terms of protection of 5 years and 10 years respectively.  A proposal by the USA would have harmonized members to a minimum 15-year term, which is the present US law.

[Article 9Bis Term of protection A Contracting Party shall provide a term of protection for industrial designs of at least 15 years from either: (a) the filing date, or (b) the date of grant or registration.], proposed by USA.4
[Article 9Bis Term of protection Contracting Parties shall have the option to comply with Article 17 of the Hague Convention or Article 26 of the TRIPS Agreement.], proposed by Nigeria.5

There was united opposition to any term of protection in the agreement by the Africa Group, GRULAC, and APG. As a result, fairly early on in the negotiation, Article 9bis was dropped from the negotiating text and no term of protection was included in the final treaty.

Making the Grace Period Optional

The basic proposal included language on grace periods during which a design could be disclosed without affecting its registerability. There are no regulations of grace periods in the Patent Law Treaty, Trademark Law Treaty, or the Hague Agreement. 

Concerns were raised that this provision may disproportionately favor larger firms in weather countries that “can afford to disclose their designs publicly without immediately filing for protection, potentially stalling local competitors who lack the financial or legal capacity to navigate complex intellectual property landscapes”. 6

The final text established a grace period of 12 months but made this provision subject to a reservation. Thus, countries may join the agreement without binding themselves to the grace period provision. 

Opposing Expanded Voting Rights for the EU 

An additional issue of particular interest to developing countries was the matter of voting rights for the European Union. In the United Nations generally, the governing principle is one country one vote. Typically, EU countries join treaties individually and each has a vote in matters requiring exercise of the franchise. In trade matters, however, the EU commonly negotiates and enters treaties as a block.

After the WTO TRIPS agreement, intellectual property in the EU, although mostly domestically regulated in each member state, is claimed by the Commission as being trade-related and thus subject to negotiation and binding member states as a block. This is in turn reflected in nine more recent WIPO treaties allowing intergovernmental organizations to “participate in the vote, in place of its Member States, with a number of votes equal to the number of its Member States which are party to this Treaty”. 7

In the DLT negotiation, the EU proposed to delete “which are party to this Treaty” to the now stock language on intergovernmental organization voting. The effect would be to permit the EU to join the treaty as a block, but then exercise 27 votes based on the number of its members bound by the treaty. The EU argued that it needed to join the treaty as a block and that not permitting it to vote for all of its members would disenfranchise European countries. 

The proposal by the EU met vocal and united resistance from developing countries. The final text of the DLT retained the bracketed text, confirming that an intergovernmental organization may have a number of votes equal to the number of its member states that are actually parties to the treaty. The language from the Washington Treaty requiring that such members be present for such voting was not added to the treaty.

Including Binding Technical Assistance

The basic proposal included a provision proposed by developing countries to require technical assistance and resources for developing countries. Very few WIPO treaties include binding provisions on such assistance. Developed countries largely opposed the provision. The United States bracketed (opposed) the entire text. Others proposed moving the provision to a non-binding resolution. 

In the end, developing countries achieved most of their priorities in the provision. Technical assistance was included as a binding provision in the treaty. For the first time in a WIPO treaty, principles from the Development Agenda were included in the text:

(1) [Principles] Technical assistance shall

(i) be development-oriented, demand-driven, transparent, targeted and adequate for the strengthening of the capacity of beneficiary countries to implement the Treaty;

(ii) take into account the priorities and the specific needs of receiving countries for enabling the users to take full advantage of the provisions of the Treaty.

The proposed language on providing “equipment” to receiving countries was not included. Rather, the provision extends to “building up the necessary capacity of the Offices, including but not limited to providing training of human resources, technological support and awareness raising” (art. 24(2)(a)(ii))

Final remarks on the influence of developing countries

The influence of developing countries in the DLT negotiations can be in part traced to the previously negotiated treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge where developing countries were the demandeurs. In the Intergovernmental Committee where the Genetic Resources treaty was prepared, developing countries have long organized as a group of “Like-Minded Countries” (LMCs) from across the traditional regional groupings. This organization in turn dates back to the Development Agenda Group that fostered cross-regional organizing in the negotiation of the WIPO Development Agenda. The LMC structure of coordination was extended to the DLT preparations. This allowed a group representing nearly a majority of WIPO members to take strong coordinated positions, maximizing influence.

  1. Bagley, Margo A., ‘Ask Me No Questions,’ the Struggle for Disclosure of Cultural and Genetic Resource Utilization in Design Law (May 31, 2018). Vanderbilt Journal of Entertainment & Technology Law, Forthcoming, Emory Legal Studies Research Paper, Available at SSRN: https://ssrn.com/abstract=3188591. ↩︎
  2. But see Bagley, Margo (2018) (surveying uses of genetic resources in registered designs). ↩︎
  3. South Centre (2024, 4): “This requirement is incongruous with a formalities treaty and is beyond its scope.” Syam, Nirmalya (2024) Towards a Balanced WIPO Design Law Treaty (DLT) for Developing Countries. South Centre Policy Brief n. 132, https://www.southcentre.int/wp-content/uploads/2024/11/PB132_Towards-a-Balanced-WIPO-Design-Law-Treaty-DLT-for-Developing-Countries_EN.pdf. ↩︎
  4. Proposal made at the SCT/S3 by the Delegation of the United States of America. Proposal supported by the Delegations of Canada, Japan, Republic of Korea, Switzerland and the United Kingdom. Proposal not supported by the Delegations of Brazil, China, Colombia, Ecuador, Ghana, on behalf of the African Group, Iran (Islamic Republic of), Niger, Nigeria, Peru, Russian Federation and South Africa. ↩︎
  5. Proposal made at the SCT/S3 by the Delegation of Nigeria. Proposal supported by the Delegations of Brazil, Kyrgyzstan, Mauritania, Niger, Uganda, Yemen, Zambia and Zimbabwe. Proposal not supported by the Delegations of United Kingdom and the United States of America. ↩︎
  6. South Centre (2024, 7-9). ↩︎
  7. See, e.g., WIPO Copyright Treaty art. 24(b), Dec. 20, 1996, S. Treaty Doc. No. 105-17 (1997); 2186 U.N.T.S. 121; 36 I.L.M. 65 (1997). See also Beijing Treaty, Hague Agreement, Madrid Protocol, Marrakesh Treaty, Patent Law Treaty, Singapore Treaty, Washington Treaty, and the WIPO Performances and Phonograms Treaty.
    ↩︎