The criteria of novelty and public disclosure for the protection of industrial designs and models
When it is possible to defend and challenge a case of prior disclosure of the design
In the field of industrial property, the novelty requirement is crucial for obtaining a valid title of protection for industrial designs and models. However, unlike patents, the criteria of novelty and public disclosure for industrial designs exhibit greater flexibility. In this article, we examine the invalidating effect of prior disclosure and outline the defense mechanisms to challenge it, ensuring the protection of your designs and models as well as safeguarding industrial design rights under EU and Italian law.
Index:
- When does pre-disclosure in industrial designs invalidate the title?
- When can we defend ourselves?
- The Court of Venice reaffirms the principles of protection
- Conclusions: attention to pre-disclosure
When does pre-disclosure in industrial designs invalidate the title?
To obtain a valid industrial design registration, the design must meet the novelty requirement: it must not have been made public prior to the filing date. However, under EU and Italian regulations on designs and models, disclosures made by the holder or their successors within the 12 months preceding the filing do not affect the novelty and public disclosure of the design. Disclosures made prior to this period, even if carried out by the same holder, instead result in the invalidity of the title, affecting the protection of designs and models and undermining industrial design rights.
When is it possible to defend against and challenge prior disclosure of a design?
To activate defense mechanisms for challenging prior disclosure of a design and safeguard industrial design protection, it is important to remember that, under EU design regulations and the case law of the Court of Justice of the EU, “a design or model is considered disclosed once the party asserting the disclosure has proven the constitutive facts.”
Even if the disclosure occurred more than 12 months prior to the filing, the holder can oppose the annulment of the title by demonstrating—through direct evidence or highly plausible elements—that the alleged constitutive facts of the prior disclosure were not “objectively ascertainable” within the specialized circles of the relevant sector in the European Union (see Art. 7 of the EU Design Regulation; Art. 34 of the Italian Industrial Property Code).
The legislation excludes from the novelty-destroying effect any disclosures that could not have been known to the specialized professionals in the relevant sector, thereby ensuring the protection of industrial designs and models and EU design rights even in cases of dissemination prior to the grace period.
The Court of Venice reiterates the principles for the protection of industrial designs and models.
These rules were confirmed by a recent judgment of the Business Section of the Court of Venice (case 10799/2022). While declaring the model null in the context of industrial design litigation, the judges reaffirmed the protection criteria for industrial designs and models and recognized the holder’s right to defend design titles even in cases of prior disclosure occurring more than 12 months before the filing date. According to the Court, it is legitimate to initiate an action for the nullity of an EU design by opposing the cancellation of the title, in accordance with EU design regulations and EU design rights, thereby ensuring broad protection of industrial designs, unlike the provisions applicable to patents and utility models.
Conclusions: attention to pre-disclosure
In conclusion, it is essential for holders of industrial designs and models to carefully assess the consequences of any form of prior disclosure, planning protection strategies for industrial designs and models from the very early stages. Although the design regulations provide a 12-month flexibility window for disclosure, as seen in the criteria of novelty and public disclosure, any communication prior to this period may compromise the validity of the title. However, thanks to the defense mechanisms for challenging prior disclosure of a design and the principles reaffirmed by EU and Italian regulations (Court of Justice of the EU and Court of Venice), it is possible to demonstrate that the constitutive facts of the disclosure were not known to specialized professionals in the sector. This flexibility provides greater protection for industrial designs compared to patents and utility models, offering broad opportunities to defend EU design rights even in cases of prior disclosure occurring more than 12 months before filing.