Protection of Partial Designs
22 August 2012
The concept behind partial designs, as is prevalent in jurisdictions including the United States, Japan and the European Union, is that the novelty may reside even in a portion of the entire article and thus such portions are required to be given protection. For instance, a uniquely shaped and configured knife handle is capable of being protected through partial designs irrespective of the shape and configuration of the blade. Thus, any person using or making similarly designed handle for any shape and configuration of the blade would be prohibited by the protected partial design of the knife handle. Partial designs are generally depicted with the help of dashed or dotted lines such that the portion of the design being claimed is shown with solid lines while the unclaimed portion is shown with dotted or dashed lines. The portion shown with dotted lines depicts the environment in which the design sought to be protected exists, such as the knife blade shown with dotted lines depicts that the uniquely configured handle is to be used with a knife blade, however, no claim is being made to any particular shape of the knife blade and the only claim is on the handle.
The United States Manual of Patent Examining Procedure prescribes that the structure shown with dotted lines is not a part of the claimed design but is considered necessary to shown the environment in which the design is associated. Japanese law, amended in 1999, has also introduced the concept of partial designs on the same lines. The JPO requires that a statement regarding what is claimed and by what method the claimed part has been depicted is to be specified in the application. For considering infringement, regard would be had to the claimed portion only and not the unclaimed portion. Provisions regarding community designs in the European Union also draw parallel to the US and JPO legislation.
The position in Asia with regard to acceptability of partial designs varies. While Russia and Indonesia allow partial designs to be registered, Chinese design legislation does not allow partial designs and thus it becomes necessary in China to appropriately amend the representations filed with the priority application (claiming a partial design) so as to claim priority.
The position in India with regard to acceptability of partial designs has not evolved to a reasonable extent and there still exist varied opinions with regard to whether Indian practice should provide protection for partial designs. The Designs Rules, 2001 specifies themanner in which the representation sheets are to be prepared for applications for design protection. The rules do not specify anything related to use of dotted lines or allowability of partial designs, however it is interesting to note that the rules, at the same time, do not prohibit partial designs. In this respect, guidance may be sought from the Manual of Design Practice and Procedure (MDPP) published by the Design Office on March 31, 2011, which specifies that dotted lines may be used in the representation sheets to indicate those elements of the article for which no protection is sought. The manual clarifies that the dotted lines indicate those portions which are not part of claimed design and the features for which protection is sought must be shown in solid lines.
The practice, however, does not substantially conform to these specific guidelines and the Design Office has been raising objections regarding the clarity in drawings in case the same include dotted lines. A reason for this could be that unlike laws in the US, Japan and EU, the Indian Act and manual are silent about the rationale behind allowing such partial designs and the scope of protection available to partial designs. Consequently, the Design Office generally requires the dotted lines in the representation sheets
to be replaced with solid lines and point out the novel portion by means of arrows, with the statement of novelty clearly specifying that only the portion marked by the arrows constitutes the novel portion.
Though this approach appears to be yet another manner of representation of partial design, the implications on the scope of protection available to the proprietor is yet to be analyzed. For determining infringement, it is believed that the regard would be had to the novel portion only, as in jurisdictions allowing partial designs. However, until there is a judicial interpretation of the provisions of the Design rules in light of the guidelines in the MDPP, the legal position in India with respect to partial designs remains unclear.
The Controller General of Patents, Designs and Trade Marks has sought comments from the stakeholders in respect of draft regulations on industrial design law and practice prepared by the WIPO standing committee on law of Trademarks, Industrial designs and Geographical Indications. Proposed Rule 3 of the draft regulations proposes use of dotted or stippled lines to indicate matter for which protection is not sought. The explanation to the rule clearly brings out that the dotted or stippled lines indicate environmental matter for which protection is not claimed and that such matter can help to understand the nature of design. It is hoped that said provisions of the draft regulations will be reflected in future amendments to the Designs Act and Rules thereby providing legislative cover for protection of partial designs in India.
