Remarks by Director Michelle K. Lee at the Inaugural Meeting of ID5

Inaugural Meeting of ID5

December 3, 2015 11:30 AM

Global Intellectual Property Academy, United States Patent and Trademark Office

Keynote Remarks by Under Secretary and Director Michelle Lee

Good morning, everyone. It is my great pleasure to welcome you all here to the United States Patent and Trademark Office, on a momentous day for our offices and the international industrial design community. I am particularly pleased to be hosting this inaugural event here in Alexandria, Virginia. We come together here for two days of meetings as we formally establish an industrial design forum — the ID5.

This is quite an accomplishment, and many individuals here in this room have worked long and hard to make it a reality. It is a testament to your foresight that you recognized the growing global importance of industrial design protection, as well as the need for a new international framework devoted to its improvement.

This process began with ad-hoc discussions between various design offices. It then expanded into somewhat more formal discussions in the trademark trilateral and then in the TM5. These initial attempts, while important, did not fully capture the true potential that results from combining the five largest industrial design offices in one formal group based on a shared set of goals and principles. That is what we begin today.

As we discuss today and tomorrow how ID5 will operate, how it should be organized, and what we hope to achieve, we must take into consideration lessons learned in other international frameworks — namely the IP5 and TM5.

Both are well-established, marked by significant achievements and impressive objectives.  Each, in its own way, is a success. So we will learn from these past experiences, while also recognizing we are now building something new.

Industrial designs are unique forms of intellectual property. Unlike invention patents and trademarks, industrial designs combine industrial applicability with ornamentality and creative expression. They recognize not just the value of the appearance of an object, but how it functions.

Also, we all know that patents and trademarks focus as much as possible on rigid rules and clear, bright-line tests. For example: “Does this patent application contain elements A, B, C, and D?” “Where does this trademark fall within nearly 16,000 harmonized descriptions of good and services?”

Designs, on the other hand, focus on the visual impression provided when one views the design. We look to the overall appearance of a design to judge whether its new or novel, as well as whether it is a misappropriation of someone else’s design rights. Designs are truly judged in the eye of the beholder. Under U.S. law, actually, the legal standard is the, quote, eye of an average observer beholder. Given these differences, we must ensure the distinct aspects governing industrial design laws and practices among today’s participants guide us today and in the years to come.

While unquestionably important now, we did not always recognize the need for a robust system to protect industrial designs in the United States. While we celebrated this year the 225th anniversary of our first Patent Act — enacted in 1790 — it wasn’t until over 50 years later that the United States passed its first law protecting industrial designs. During those intervening years, U.S. designers of industrial goods struggled to obtain protection for the creative aspects of their products. While patents could only protect the functional aspects, copyright protection at that time was unavailable for three-dimensional products. Only in limited instances was protection available for two-dimensional surface ornamentation. Concerns grew in the 1830s, particularly in the then-developing cast-iron manufacturing sector.  The industry had developed new and innovative casting techniques to produce stoves, chairs, and other household fixtures that went beyond just function and more toward ornamental appeal and product differentiation. Unable to protect their elaborate designs, a group of manufacturers joined together in 1841 under the leadership of Jordan L. Mott, a famous U.S. stove designer, and petitioned Congress to address this protection gap. The petition eloquently described the burdens of innovative designers in developing and manufacturing a new product, as well as the ease at which they could be imitated.  The Mott petition cited design protections gained in the United Kingdom just two years earlier, and argued for similar protections in the United States, stating:

“Your petitioners believe that the manufacturers and mechanics of the United States are not surpassed by those of any other country, in the durability and utility of the articles manufactured by them and … would equal any others in beauty, if new designs and patterns were secured by registration”

Just over one year later, in 1842, the 27th U.S. Congress passed the first industrial design law. Similar concerns bring us together here today, nearly 175 years later. The prevalence of industrial designs in everyday life has grown exponentially since 1842, necessitating a continued development and expansion of that original legal framework.

As markets expand globally, the need for a system to ease the burden of obtaining industrial design protection in multiple countries became acute. That resulted in the Hague Agreement Concerning the International Registration of Industrial Designs. This has been an especially important year for us in that regard, as the United States acceded to the Hague Agreement this past May. We were honored to join at the same time as our distinguished colleagues from Japan.

Industrial designs will continue to grow in importance, playing an ever more visible role in the global intellectual property environment. Thus our new framework — the ID5 — arrives at a critical time. Industrial design filings are up across the globe. At the same time, litigation challenges dominate the headlines. For us to get this right, we must achieve balanced improvements that benefit both designers and users. This is especially important given the ever-dynamic nature of creative design. The agenda for this inaugural meeting was developed for just this purpose. 

I expect the next two days will be full of productive discussions. We at the USPTO look forward to working with all of you to meet today’s challenges, while learning how we can provide assistance to each other in this important mission. Then, as only the five largest industrial design offices can, we must come together collectively to strategically develop tools, practices, and office efficiencies. These agreements will promote the further development of user-friendly, consistent, and interoperable industrial design protection systems. It through this approach that the ID5 will become the success we are all here to ensure. Again, I am delighted to welcome all of you here for what I am sure will be a highly successful inaugural meeting.

Thank you.

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