by: Attys. Richmond K. Lee & Rowena D. Palma, Angara Abello Concepcion Regala and Cruz Law Offices

On 18 July 2023, the Intellectual Property Office of the Philippines, through the Bureau of Patents (IPOPHL-BOP), issued the “Interim Guidelines for Novelty Assessment and Visibility Requirements for Industrial Design” (Design Guidelines). The Design Guidelines shall serve as basis by the IPOPHL-BOP for future office actions regarding novelty determination of industrial design applications.

Pursuant to the directive of the Director of Patents, the Design Guidelines was issued following the release of the Decision on the Verified Adverse Information for the application PH 3/2021/050062, titled “A TAMPER PROOF CONTAINER”. The said Decision provides a definitive ruling from the Director on how to determine novelty and registrability for industrial design applications. It also defined the "Ordinary Observer Test” and introduced a second-tier test called the "Circumspect Observer Test". This Decision of the Director is said to be in line with the Decision of the Court of Appeals in Happy Choice Disposable Packaging, Inc. vs. Warren Co. (CA-G.R. SP No. 171108, 29 March 2023).

Under the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs (Revised Rules), an industrial design shall only be registrable if it is new or original under the perspective of an ordinary observer. It may be recalled that the Revised Rules adopt an expeditious registration process for industrial design so long as the formal requirements are met and the required fees are paid. Novelty assessment of industrial design applications are only initiated either upon the issuance of a registrability report, by order of the Director motu proprio, or upon filing of a Verified Adverse Information or a Pre-Grant Opposition by any interested party within one month from the publication of the industrial design application.

The Design Guidelines provide that the Ordinary Observer Test alone is sufficient to determine novelty if the application is at the stage of prosecution with the Examiner. An “ordinary observer” is defined as “a regular purchaser, consumer, user, or viewer who possesses merely ordinary skills and ordinary discernment in relation to objects he purchases, uses, or views.” “Traders” are included within the ambit of the term “consumers,” as they are the persons who are appropriate in determining the actual status of trade and distribution of the article. An ordinary observer is not a design expert, collector, or connoisseur. The Ordinary Observer Test provides that an industrial design application is novel over the prior art if such ordinary observer, when looking at both design embodiments side-by-side, can easily distinguish one from the other. It is based on the overall look and features of the designs and is not focused on minor or miniscule differences.

In case a Verified Adverse Information or a Pre-Grant Opposition is filed against an Industrial Design application, wherein an earlier design is being cited as novelty-destroying, the IPOPHL-BOP will employ a two-step analysis for novelty assessment. The first step is the previously discussed Ordinary Observer Test. Should the industrial design application fail the Ordinary Observer Test, a new test called the “Circumspect Observer Test” should be applied. Under the Circumspect Observer Test, an analysis based on the minor differences between the subject application and the cited novelty-destroying design will be made. The common and different visual points should be selected based upon which of the common visual points draw the observer’s attention the most. Several matters should be taken into consideration in identifying said visual points, such as nature, purpose, use, and manner of use of the articles. Should the overall difference between the subject application and the cited design be deemed insignificant or negligible, then the subject application shall be considered to be not novel over the cited design. The rationale for this test is that “in a real-life situation, if the ordinary observer cannot distinguish one design from the other, said observers will then turn circumspect and will turn to looking at minor differences in the design in order to distinguish one from the other.”

In summary, the following are the steps to be followed by the IPOPHL-BOP in determining registrability and novelty of industrial design applications:

STEP 1: IS IT NEW VS. PRIOR ART?

* If at the stage of prosecution before Examiner

Step a: Does it pass the Ordinary Observer Test?

If yes, it is novel.

If no, it is not novel.

* If during pre-grant opposition:

Step a: Does it pass the Ordinary Observer Test?

If yes, it is novel.

If no, apply Step b.

Step b: Does is pass the Circumspect Observer Test?

If yes, it is novel.

If no, it is not novel

STEP 2: IS THE NEW DESIGN DICTATED BY TECHNICAL OR FUNCTIONAL REASONS?

* If yes, reject on this particular ground of non-registrability.

* If no, may be registered if new.

STEP 3: IS THE NEW DESIGN CONTRARY TO PUBLIC ORDER, HEALTH, OR MORALITY?

* If yes, reject on this particular ground of non-registrability.

* If no, may be registered if new.

It is worth noting that the Design Guidelines, particularly the introduction of the Circumspect Observer Test for novelty assessment, was issued by the IPOPHL-BOP pursuant to its “duty to exercise due care and caution in granting intellectual property rights, whether patents or industrial designs.” The Design Guidelines are interim in nature and do not constitute binding legal provisions and may be deviated from in exceptional circumstances. Applicants are strongly encouraged to check that their industrial design applications are in conformance not only with the Design Guidelines, but also with the requirements of the Intellectual Property Code and the Revised Rules.

 

 

 

 

Disclaimer: The views and opinions expressed in the articles are those of the authors and do not necessarily reflect the official policy or position of IPAP.