Zuykov and partners proved the "Tool Bag" industrial design lacks novelty

On November 7, 2023, Y.E. Chepurnova was granted Russian Patent No. 139130 for the industrial design of a tool bag. The patent holder has actively filed complaints against competitors, alleging infringement of her exclusive rights to the industrial design, despite having disclosed the design long before the priority date. One such complaint was received by BTL LLC, whose interests are represented by Zuykov and partners.

According to the applicant, BTL LLC, this industrial design does not meet the patentability conditions of “novelty” and “originality”, grounds for recognizing the patent as completely invalid.

The legal basis for assessing the patentability of an industrial design under Russian Patent No. 139130 includes the Civil Code of the Russian Federation; the Rules for drafting, filing, and reviewing documents that are the basis for performing legally significant actions for state registration of industrial designs and their forms, approved by Order of the Ministry of Economic Development of the Russian Federation dated September 30, 2015 No. 695 (the "Rules"); as well as the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of a public service for state registration of an industrial design and the issuance of a patent for an industrial design, approved by Order of the Federal Institute of Industrial Property dated January 20, 2020 No. 11 (the "Guidelines").

Following paragraph 1 of Article 1352 of the Civil Code of the Russian Federation “An industrial design is a solution to the appearance of an industrial or handicraft product.

An industrial design is legally protected if its essential features are new and original.

The essential features of an industrial design include features that determine the aesthetic characteristics of the product's appearance, in particular the shape, configuration, ornament, combination of colors, lines, contours of the product, texture, or grain of the product's material.

Features determined solely by the technical function of the product are not protected features of an industrial design."

Clause 2 of Article 1352 of the Civil Code of the Russian Federation establishes that “an industrial design is new if the totality of its essential features, reflected in the images of the product’s appearance, is not known from information that has become publicly available in the world before the priority date of the industrial design.”

According to paragraph 3 of Article 1352 of the Civil Code of the Russian Federation, “An industrial design is original if its essential features are determined by the creative nature of the product’s features, in particular if, from information that has become publicly available in the world before the priority date of the industrial design, no solution is known for the appearance of a product of a similar purpose that produces the same general impression on an informed consumer as the industrial design, reflected in the images of the product’s appearance.”

The applicant provided evidence that the industrial design under Russian patent No. 139130 does not meet the patentability conditions of "novelty" and "originality" since the solutions for the appearance of identical products were known from information that became publicly available before the priority date of the industrial design. In addition, this information was confirmed by the patent holder himself in his claim for violation of the exclusive right to industrial design.

Thus, the date of inclusion of information sources in publicly available information is determined before the priority date of the contested industrial design and before the start of the period of the author's benefit within the meaning of paragraph 4 of Article 1352 of the Civil Code of the Russian Federation. A comparative analysis showed that the entire set of essential features of the contested industrial design is known from the sources.

Additionally, a comparative analysis of the contested industrial design with other sources showed that the compared products are characterized by the same sets of essential features that form the same visual impression: the generic concept and purpose coincide, and the composition of most of the composite elements is completely or partially identical. At the same time, the features that distinguish the contested industrial design from the found product are inherent in decisions based on other sources, which the applicant proved in the case materials.

According to the applicant, in this case, there is a compilation of various solutions for the appearance of products, excluding the creative nature of the features of the resulting product. And if it is established that the set of essential features of the declared industrial design differs from the known set of features of the appearance of the closest analogue by one or more essential features, and solutions containing these essential features are identified in publicly available information, then such an industrial design cannot be recognized as corresponding to the patentability condition of "originality".

Having studied the case materials and heard the participants in the consideration of the objection, the panel stated that the external appearances of the products reflected in the submitted sources of information may indeed be included in the information that became publicly available before the priority date of the industrial design under the contested patent for assessing its patentability. The external appearance of the product presented in the case materials has all the essential features of the industrial design under the contested patent, which indicates that this industrial design does not meet the patentability condition of "novelty".

Taking into account the above, on September 2, 2024, the Chamber of Patent Disputes satisfied the objection of BTL LLC to recognize the Russian Federation patent for industrial design No. 139130 "Tool Bag" as completely invalid due to the non-compliance of this industrial design with the patentability condition of "novelty".