Locarno classes are by now fashionable

What are Locano classes?  What do I mean when I say that Locarno classes are by now fashionable?

I’ve mentioned more than once that industrial design protection has only been generally appreciated in very recent years.  I’ve mentioned that there are a very small handful of intellectual property practitioners (see for example here and here and here and here) who were serving clients in the area of industrial designs long before it was trendy and fashionable. The practitioners in this small community were, for decades, voices in the wilderness, trying to get people to pay attention to industrial design protection.

Recent events made all the difference.  The Apple v. Samsung case with its billion-dollar jury verdict, half of which was from design patents.  Countries with large economies belatedly joining the Hague Agreement, which is the international filing system for industrial design protection.  The development of “the ID5“, being a group of the five largest Offices that provide design protection.  The realization that the “payoff ratio”, defined as the ratio of amount of money you might get awarded to you by a jury for an infringement of a kind of protection divided by the cost of obtaining that protection, might be ten times better for a US design patent than for a US utility patent.  Maybe in a small way the launches of the Design Patent Tote Board and the Industrial Designs Listserv contributed to all of this.  A subtle but significant indication of the recognition of the importance of designs is that Offices are belatedly joining the WIPO DAS system, which is the international system for electronic interchange of electronic certified copies of priority applications.  By now the participating Offices in DAS for the purpose of designs include Chile, China, India, South Korea, Spain, and the United States.  (Conspicuously absent but soon to join are the Japanese Patent Office and the European Union Intellectual Property Office.)

Only in recent years might one might overhear a corporate decisionmaker saying to a colleague something like “wow I sure can’t tell you exactly what a design patent is, but what I can tell you is we better get a bunch of them!”

click to see his web page

It used to be that the organizers of Design Day at the USPTO had trouble filling the seats.  As of right now there are only 70 seats left out of 400 for Design Day 2019.  Design Day 2019 will be sold out within the next three days, which is more than a month in advance of the event.

Which reminds me of Tom Moga, yet another of the people who served as voices in the wilderness, years ago, trying to get people to pay attention to industrial design protection.  A decade ago Tom and I arm-wrestled with the then-chair of the professional programs committee of a well-known professional association to try to get a design patent segment included as a portion of a two-hour educational program that he and I were coordinating for the annual meeting of the association.  He and I went back and forth with the chair on this, arguing for many weeks.  She said designs were a distraction, that the only thing that mattered was utility patents.  She finally relented, grudgingly giving us permission to devote eighteen minutes of our two hours to industrial designs, but warning us (I am not making this up) that she was going to be in the audience with a stopwatch, making sure that we did not stray past the eighteen-minute limit for the design portion of the two-hour program.

Which brings us to Locarno classses.  What are Locarno classes?  Why are they suddenly fashionable?

Any intellectual property system necessarily has a “classification” mechanism.  The world of utility patents once had “US patent classes” and “international patent classes” and now has CPC (cooperative patent classes).  The world of trademarks once had US trademark classes and now uses so-called “Nice classes” which you can read about here.

Back in 1968, in Locarno, Switzerland, a bunch of industrial design Offices got together to establish what are now called “Locarno classes”.  The Locarno system, which you can read about here, is the classification system for industrial designs.  Five decades have passed during which pretty much the only practitioners who paid attention to Locarno classes were the above-mentioned voices in the wilderness along with their professional colleagues in Europe.

Now of course the Locarno classification system is fashionable.  Practitioners who once belittled design patents as inferior to utility patents now pretend to have known all along about the Locarno system, just as they pretend to have known all along how important design protection was.

The Locarno system defines thirty-two “Locarno classes” which you can see here.  Class 17 is musical instruments.  Class 11 is articles of adornment.  The classification system is important, among other reasons, for facilitating the searching of prior art.

In 2019 probably the single most important reason why practitioners need to know about the Locarno system is that you cannot competently make use of the Hague system (the international design protection filing system) unless you know about Locarno classes.  If you are going to file a “Hague application” (an international design protection application) you need to look at Locarno classes to figure out how to group things in your filing.  Importantly, in any single international design application you can include up to 100 designs, but only if the designs all fall into the same Locarno class.

So for example one client of our firm recently filed four US design patent applications.  The fact of the four design applications having been filed triggers the start of the six-month priority period under the Paris Convention (see Bodenhausen’s book).  For this particular client, the six-month period will run out in about June of this year.  Between now and then, the client will need to file one or more Hague applications.  And the question is, how many Hague applications? And this client’s design filings, it turns out, fall into Locarno class 11 (articles of adornment) and Locarno class 3 (travel goods, cases, parasols and personal belongings, not elsewhere specified).  So the four US design applications will fit into two Hague applications — a class-3 application and a class-11 application.

Only through study of the Locarno classes involved were we able to work out that the number of Hague applications to file for this client will be two rather than as many as four applications as one might have thought from a count of the number of US priority applications.

Just as an experienced trademark practitioner might be able to tell you instantly that Nice class 25 is clothing and Nice class 10 is medical apparatus, so an experienced design practitioner might be able to tell you instantly that Locarno class 2 is articles of clothing and haberdashery, and Locarno class 24 is medical and laboratory equipment.

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