WIPOD – Design Talks: Transcript of Episode 7

Practical Insights for Protecting Your Designs and Safeguarding Creativity

Sarah Lucek: Welcome back to the captivating world of design. I'm Sarah, your host, and I'm thrilled to kick off season two with an essential discussion on protecting your designs and safeguarding your creative vision. Today, we have an incredible guest who will share invaluable insights to help you elevate your approach to design protection. It's my pleasure to welcome Mrs. Tracy-GeneDurkin, the practice leader of Stern-Kessler's Mechanical and Design Practice Group and a member of the Trademark and Brand Protection Practice. With over 30 years of experience, Tracy is widely respected for her deep expertise in patents, trademarks, and copyrights. She has guided numerous companies through complex legal cases in US courts and trademark boards, making her an ideal guest for this conversation.

Tracy, welcome and thank you so much for joining us today.

Tracy Durkin: Thank you, Sarah. It's really a pleasure to be here with you.

Sarah Lucek: Thank you. So to begin with, I would love for you to share a bit about your journey, what inspired you to specialize in in IP protection, and how did you find your way into working with designs?

Tracy Durkin: Well, I began my career in IP as a utility patent examiner at the U.S. Patent and Trademark Office, I went there straight out of college where I graduated with a degree in textile engineering. And I worked at the patent office for a couple of years examining utility patent applications. I started attending law school at night. And so, I was working during the day at the PTO, going to law school at night. And then as I was getting towards the end of that four-year program, I thought it was probably a good time to venture out and get my feet wet in a law firm. And that's when I transitioned to the law firm where I am today, Stern Kessler, and I've been there since 1989.

I started filing design patent applications shortly after I got to the firm. I had not ever touched them when I was at the PTO, but I joined a practice that was active with design patents at the time. And since then and today, I now lead a team that last this year alone filed more than 3,000 design applications globally with the help of foreign council of course and we filed over 700 in the US. So we're pretty active.

Sarah Lucek: Well, that's really truly inspiring. Thank you for sharing this. I believe that working with a diverse range of clients, you must encounter a variety of challenges related to design protection. So what are some of the most common challenges designers face when trying to protect their work? And are there any misconceptions they often have about safeguarding their designs?

Tracy Durkin: I think one of the biggest misconceptions about design practice is that you can't protect designs that are functional or that have a function. And, you know, sort of by definition, an industrial design is a product that is reproduced, you know, in a relevant handicraft or something, it's reproduced in an industrial way. And by definition, they're going to have function. It's going to be, you know, a running shoe or an electronic device or, you know, whatever. So designs, even though they have a function, a purpose, they're still protectable by design patents and registrations. And I say both patents and registrations because there are different schemes, if you will, around the world in terms of how designs are protected.

In some countries, they're granted as patents, like in the US, and in some countries, they're granted as registrations, like in the European Union, for example. So I think that should not be an impediment for any designer in terms of seeking protection. The other thing I think that sometimes will get in the way is cost. There can be some significant costs to protecting designs.

But there are some economical ways to do it. Certainly, in the registration countries, it's less expensive. And, you know, that can be an impediment for some. The other big issue I see too is there is no worldwide design right. And so you can't just sort of request a patent that's good around the world. And so that also can become a challenge in terms of not knowing where the design might be important.

And there are some limitations in terms of timing for filing. But last, I'd say the other challenge is just a lack of harmonization across, because there is no one size fits all right, that it does become challenging in terms of what different countries and jurisdictions require. So those are sort of the big misconceptions and challenges that I see in my practice.

Sarah Lucek: Thank you for sharing this Tracy.

Sarah Lucek: Let's now talk a little bit about tips for applicants. For those just starting out in the field, what aspects of design protection do you find they often overlook or misunderstand? When considering design protection abroad, the challenges can vary greatly.

Tracy Durkin: That is very true. I would say the most common issue I run into here is someone will come to me and they'll say, like, I've got this great idea for a design. And, you know, I've been thinking about it for a long time. And I finally now have resources where I can do something about it. And I'll say, well, you know, have you made it public yet? And they say “yeah you know I did five years ago but I didn't have the resources to do anything with it”. And the problem is even in the most generous countries in terms of timing to file a patent application or a design registration from when you first publicly disclose the design is only one year and some countries are shorter than that and some countries have no what we call grace period at all. And that includes China, for example, currently. And so that's the biggest, you know, sort of disappointment that I have sometimes as a patent attorney, because someone comes to me with this great idea, they disclosed it publicly more than a year before, and there's just nothing we can do from a patent standpoint. And so the most important thing, I think, for designers to think about is, you know, this, from when you make it public, this clock is starting, and you really need to pay attention to that. There's some hope that a recently finalized treaty, the design law treaty, which just was finalized last month, that will hopefully encourage all members of WIPO to adopt at least a minimum a one-year grace period. And so that may change in the short term, but for right now, we need to be very careful in terms of not disclosing our design until we are ready to file for patent protection.

Sarah Lucek: From your perspective, what essential steps should designers take early on to ensure their work is protected, especially for those who may not have the resources to hire legal experts?

Tracy Durkin: I think the most important thing is to again not share your design with anyone who isn't under some obligation of confidentiality. And you know, in a perfect world, you'd have a written agreement with them where they understand they're receiving confidential information and they agree not to disclose it without your permission. And you know, that can be just a very simple agreement. It doesn't have to be anything terribly complicated.

But that would be the first thing I would do. I would also couple that with, to the extent I give someone a drawing or something like that, I'm sharing with them this confidential information, I would be sure to mark it as confidential. And I would also put a copyright notice on it. That just, you know, kind of shows that you're taking this seriously in terms of IP protection. And then I think it's also important to just carefully document that exchange of information, and then also carefully document any contributions that others are making to your design. Because one of the things I see happen more often than it should is a design time application gets filed, the design becomes wildly important, everyone's excited about it, and then someone comes out of the woodwork and says, well, know, I was involved in that too.

And you know, this could be years later, it can get very messy and very expensive. And this can happen, you know, just with even if you hire a company to make a prototype for you or, know, even just something like that. Those partners, if you will, you know, might start to claim rights in the design once it becomes valuable. And so getting all of that documented from the beginning can be really important. And, you know, yes, it's good to have a lawyer. But some of those things can also be done on your own with just some common sense and careful drafting of the documents and making sure you have an agreement with anyone that you're working with while the design is still confidential.

Sarah Lucek: Thank you, Tracy. I believe that these tips will really be valuable for our designers out there. Let's talk about international protection options now. When it comes to international design protection, the options can be overwhelming with so many registration systems, different rules for filings and varying requirements in each country. The process can become complex and even time consuming. Managing multiple applications and ensuring compliance can be a real challenge. One system that has gained recognition for streamlining this process is actually the Hague system. Tracy, I would love to hear your thoughts on this. Have you or your team used the Hague System in any cases?

Tracy Durkin: Yes, we have. But I have to be very honest with you. I was very skeptical of the Hague system when I first heard about it probably 20 years ago. It just didn't sound like it was anything that I really needed to be recommending to my clients. At the time, there were not a lot of member countries that were sort of in the mainstream of design protection.

But as the system has grown and it's now included regions like Europe and the US, Japan, Korea, China. The list, as you know, goes on.It has become much more economical, much less time consuming., much more control over the filings. And I have started using it with clients, big and small with great success. It is not the one stop shop that WIPO originally was explaining it to be because once these examination countries came along, some changes had to be made and are still being made. But it does definitely streamline the filing, particularly for less complex design filings with fewer countries. It absolutely is a very useful tool. I do still have to hire foreign counsel after an application's been filed to handle certain formalities. One example that comes to mind is certain countries like Mexico still want a translation of the priority document. So even though WIPO DAS is a fabulous way to exchange the documents, if there's still this requirement for a translation, then you need to hire counsel in Mexico in order to file that. And that's just one example. But I think these sorts of things over time are going to become much more streamlined and we're just, you know, continuing to see so many improvements year after year in the system that I'm really bullish and that it's going to become an even bigger part of my practice. Again, I was one of the biggest skeptics. So I am now one of your biggest fans. So congratulations.

Sarah Lucek: Thank you. I'm glad to hear that you're actually familiar with the Hague System. I just have a follow-up question, actually. Would you say that in terms of substantive examination, it's not a one-stop shop, but would you say that it is the case in terms of filing applications, managing registrations?

Tracy Durkin: Yes, absolutely. And when I say not a one-stop shop, what I really mean is you don't always come out with the exact same right in every country that you went in with. Because even though there is an obligation for the member countries to accept certain things, in countries that examine, they still have their own statutory requirements that, for example, in the US, the design be enabled so that it's perfectly clear to the public exactly what the scope of protection is. And so even if you file through the Hague, the US Patent Office, for example, could still find inconsistencies between your drawings, and they may require you to change them. And so I don't know how often it happens, but I know personally, There are situations where maybe the right that ultimately registers is not identical in the US and Japan and Korea and Europe, for example. But it's pretty darn close. And the changes are not usually substantive in terms of them really changing the protection. It's not necessarily a system where what goes in comes back out the other side in every single country that you designate.

Sarah Lucek: Thank you for that clarification. What led you to recommend the Hague System to your clients? Were there specific advantages or features that made it the preferred option?

Tracy Durkin: Yeah, I would actually say I started using it more with smaller clients because of the significant cost savings that was available by I don't want to say cutting out foreign counsel because that's not you know what I mean, but by eliminating the need for foreign counsel at least on filing when I've run the numbers, you know, that can be a four or $5,000 difference depending on where you're filing. And so that was  a significant reason why I started looking at it, especially for clients with limited budgets. But then I found some other really surprising cost savings. Just for example, when I have a foreign filing program, I insist that the foreign counsel send me a draft because there are times when a name is misspelled, we all make mistakes.

And so it's become our practice or has always been our practice not to just say, here's some information, file this with the patent office. We insist on reviewing the drafts, make sure the right drawings have been included. For example, the right priority claim is being made. And that can get expensive. And when we use the Hague system, what we put into the system is what the information that goes to every designated country. And so it's really eliminated You know, we have much more control over the process. And so it's really eliminated this back and forth with foreign counsel, you know, and just even from, you know, ensuring they receive the instruction email, you know, that can keep you awake at night if you're close to a deadline. And that's another real advantage If a client doesn't get back to me till the day before a deadline, you know, Japan might be closed for the night.

And so, you know, it's a very easy way to do last minute rush filings, which of course we always wish would never happen, but it does. So those have been some of the things that have really driven me to the system and frankly what are keeping me there as well.

Sarah Lucek: So while the Hague System offers a simplified application process and potential cost savings for international design protection, we still see relatively few applications coming from developing countries. In your opinion, what do you think are the main reasons behind this and what advice would you offer to designers in these regions to encourage them to take advantage of such opportunities?

Tracy Durkin: Yeah, I don't know that I would necessarily recommend designers start filing design applications through the Hague system on their own. You know, it is a legal process and there are, you know, lot of countries like the U.S. have a registered patent attorney program where they know that people have been trained to counsel clients on these sorts of things. The other important thing I think again goes back to this one year grace period because It's not really a do-it-yourself kind of thing if you get the filing wrong You can't necessarily get a do-over if it's been more than a year between the time you've disclosed your Design. So with trademarks, for example, there isn't that time period and so, you know if someone wants to kind of do it yourself on filing a trademark application, I think that's a little safer. But with patents, there is this unforgivable grace period. And so I would encourage them to educate themselves about what's available to them. But I would just be cautious about doing this themselves. But the other thing I'll add here is WIPO has some fabulous resources available on their website with information for applicants.

With information about experienced practitioners, I go to the website all the time just to see what's new there. They have fabulous statistics. They do have some great self-help guides. And you can at least familiarize yourself with the process, even if you're not comfortable actually utilizing it yourself.

Sarah Lucek: I totally understand and it's true that it is important to have legal advice when filing applications. But what would you say really toRa designer who has just started with limited budget for legal advice, for example?

Tracy Durkin: Yeah, there are. I just had actually a friend come to me recently who had an IP question and I, you know, it's not good to give your friends legal advice. So I actually looked online and I saw there's actually a lot of pro bono clinics, certainly here in the United States. All of our universities have some of the larger universities that have law schools. that have an IP program, they have an IP clinic, for example. those are free, that's why it's called Pro Bono. my suggestion is explore that first. I'm sure that's available around the world and you can get excellent legal advice for free or very low cost.

Sarah Lucek: Thank you, Tracy. Given your experience with the Hague System, are there any tips you could provide first-time users when it comes to filing online?

Tracy Durkin: Absolutely. Yeah, one thing to keep in mind that there is this opportunity to designate multiple countries and have multiple designs in one application. One thing I quickly learned as we started using the system was all designs go to all countries that you designate.

And so that's something to be careful of. It may require that you file two applications, for example. Maybe you only want certain designs in some countries, certain designs in others. And so think about the fact that you're still going to save money, but it might be better separating things. The other limitation currently in place is Locarno class, which is the sort of classification system of where designs go. Washing machines are in a different class from running shoes and you can combine things that are in the same Locarno class. So that's another thing to keep in mind. The priority document and translations that we already talked about that can come as a surprise for some people. Another thing that can happen is in some jurisdictions you can file with multiple designs but you can only register one at a time.

The US is an example of that. And so if you have multiple designs in your Hague application and you designate the US, you may get what's called a restriction requirement where you have to separate them out into multiple applications. Again, this is all doable, but it could come as a surprise to people who are not familiar with the system. You may have to proactively engage with local council to do certain things. So keep that in mind.

There also is the filing dates, this is sort of a tricky one, are determined based on time in Switzerland. So you need to be aware of this if you're filing from other countries. I think that's, yeah, primarily the things that come to mind.

Sarah Lucek: Thank you. Following up on that, we are always working on improving our online services. What would you like to see more of in the future?

Tracy Durkin: Yeah, let me first start by saying your customer service desk and again the resources that you have online are just fabulous. I mean it's come so far from, I remember the first time looking at the WIPO website when I first heard about the Hague system. It's really incredible and the response time is just phenomenal. So I can't suggest anything there. You're doing a great job.

At some point, it would be really lovely to have the design by design designations per country. I don't know if we'll ever get to that. With the new EU reform, which has removed the Locarno class limitation, I suspect that maybe that might go away with the Hague system eventually as well. One thing that I think you're working on that will be of big help is the ability to share an application internally. So when my staff prepares it, they can't email it to me to review and sign. We have to actually get on a WebEx call and share the screen in order for me to sign the application. So that's a little clunky. And it would be nice to have that improvement. It would also be nice to be able to file higher quality drawings in different formats, like vector and PDF.

You know, with design applications, the drawings really are everything. And so the better quality drawings that go into the system, you know, the more quality the right is that comes out the other end. And so, you know, I think these are all things you're working on. It's not a surprise. But from the public standpoint, these would all be really helpful. But again, I am, you know, very happy with the system. We've had really great experience. And, you know, when things have come up, we've been able to reach out to the customer service group or you're also very good about being on the road. You know, I've run into folks from WIPO at conferences I'm at and always helpful, always making really helpful presentations. So I really have to commend you on that.

Sarah Lucek: Thank you very much, Tracy, for this very nice feedback. I'll make sure to share that with our team. And actually, you're right, we are working on some of the suggestions that you made. Actually, this is the case for the vector files, for example, we are working on this. And we will see some more improvements that will be released end of next year. So as we come to the end of our conversation, what words of encouragement or motivation would you offer to designers who may feel overwhelmed by the complexities of design protection but are eager to protect their work and continue innovating?

Tracy Durkin: First, I would tell them to educate themselves as hopefully the folks that are listening to this today are about design protection and their jurisdiction. There's lots of great online resources for that. I would also think about the fact that design rights are just one avenue for protection. There's also copyright and trademark. And so those may be more appropriate depending on what type of design is being created. As we've covered quite a few times in the podcast today, keeping their designs confidential until they're really ready to publicly disclose them and start that one year clock. Those are my main pieces of advice. There's lots of really helpful information out there and no one should feel like they're really in the dark on this topic.

Sarah Lucek: Tracy, thank you. Thank you so much for sharing your valuable insights with us today. Your expertise is not only helpful, but also truly inspiring for anyone navigating the complex world of design protection.

To our listeners, thank you for tuning in to this episode of Design Talks brought to you by the Hague Registry at WIPO, the World Intellectual Property Organization, with support from the Funds in Trust Japan Industrial Property Global.

If you enjoyed today's discussion, be sure to subscribe to Design Talks and stay connected for more exciting episodes. You can also catch up on past episodes on our website or your favorite podcast platforms, including Spotify, Apple Podcasts, and Google Podcasts. Until next time, keep creating and stay inspired!