Design laws vary by country. Some countries classify designs as patents and some have separate "registered design" or “industrial design” systems. In some countries, designs of products must be whole products in order to be registrable and not parts of products. Some countries allow protection of only part or parts of the product but the said part or parts of the product must be clearly identified in solid lines in the representations while the parts for which protection is not claimed must be indicated by means of dotted or broken lines.
A comparison of primary features of design laws in the ASEAN countries is summarized in the table and discussed below.
Click here to view table.
In Indonesia, it is possible to register “creations of forms, configuration or compositions of lines or colors, or lines and colors, or the combination thereof in three dimensional or two dimensional form which give an aesthetical impression.”
Although Indonesia allows multiple embodiments in one application, the embodiments must satisfy the “unity of design” requirement. Should the Examiner find that there is no “unity of design,” the embodiments can be split into separate applications later in the examination stage.
Malaysia Coverage is allowed under the Design Act for “features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which, in the finished article, appeal to and are judged by the eye.”
While “novelty” is a requirement, no substantive novelty examination is performed prior to registration. A statement of novelty pointing out the portion claimed as novel is required.
In the Philippines, an industrial design is defined as “any new or original creation relating to the ornamental features of shape configuration, form or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colors, which impact an aesthetic and pleasing appearance to the article.”
Philippine design practice allows for the use of multiple embodiments. However, it is important that the articles should be of substantially similar dominant design features that are embodied in a single design concept and relate to the same sub-class of the International classification or same set or composition of articles.
Industrial designs or models in Singapore are defined as “the features of shape, configuration, pattern or ornament applied to an article by any industrial process.” For national registration, Singapore requires designs be novel, but no examination as to novelty is conducted at the time of application. A statement of novelty is required and should be less than 500 words.
In Thailand, protection can be obtained for “any configuration of a product or composition of lines or colours that gives a special appearance to a product and can be used as a pattern for a manufactured or handcrafted article.”
It is important to note that Thailand does not allow multiple embodiments in one application and there is no provision for filing a divisional application in Thailand. Hence, to validly obtain protection for several embodiments, they must be filed separately in the filing stage.
Industrial design patents “protect the outer appearance of a product represented by lines, three-dimensional forms or colors or a combination of these … and which may serve as a pattern for the manufacture of an industrial or handicraft product.”
All design filings must include views of all sides of the article and a perspective view.
Since design laws and practice varies between countries, it is important that everyone considering industrial design protection must be aware of the different requirements and work with their agents in each country to obtain the most efficient and cost effective route to registration.
This article was first published in the April 2014 issue of CIPA.