TPP: what the design provisions say -- and don't say!

The IPKat's next investigation of the wikileaked text of the Trans-Pacific Partnership takes in design protection, courtesy of the American design law scholar and Katfriend Sarah Burstein (University of Oklahoma). According to Sarah:

Sarah Burstein

Two proposed TPP provisions deal directly with designs. The first is a proposal by the United States and Singapore (in Article QQ.A.6) to require each party to “make all reasonable efforts to ratify or accede to the Hague Agreement Concerning the International Registration of Industrial Designs (1999).” Presumably this is referring to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The United States is currently preparing to become a party to the Geneva Act (for more details, see here). And now, it apparently wants everyone else to join, too.

The second is a proposal by Japan to include a provision (Article QQ.F.1) stating that:

Each Party shall ensure that adequate and effective protection is provided to industrial designs, including to designs of a part of an article, regardless of whether or not the part can be separated from the article.

Although this provision is short, it raises a number of questions. For example, this provision would require that industrial design protection be “adequate and effective.” But from whose perspective and to what end(s)? Adequate to satisfy all or most design owners? Effective at promoting innovation? Or is this language purposefully vague, in order to provide parties with flexibility in how they protect industrial designs? 

The specific reference to partial designs is particularly intriguing. It’s not clear (at least to this reader, who not an expert on Japanese design law or policy) why Japan wants to mention partial designs specifically or why it is so focused on separability. Do any IPKat readers know—or have hunches about—what might be motivating that these parts of the proposal? 

But overall, the most important—and potentially troubling—part of this proposal is what it does not say. 

A comparison with TRIPS illustrates the problem. TRIPS requires its members to protect “independently created industrial designs that are new or original.” But it also allows for some important exceptions, stating that: 

Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.

Proposed Article QQ.F.1 does not provide for any such exceptions. So, unlike TRIPS, it would not allow parties to deny protection to industrial designs that are obvious or dictated solely by function. Indeed, it does not appear to even allow parties to require novelty (or originality) as a condition of protectability.

If this is the intended effect, then this proposal much more radical—and much more alarming—than it might appear at first glance. And if this is not the intended effect, the negotiating parties should either reject this proposal outright or amend it to clarify the required scope of protection.