Industrial Design: The Inseparability of Priority from Novelty

November 10, 2016

The essence of prior art as a bar to the registrability of a design lies not only in its similarity with the disputed design but also in the fact that it enjoys precedence. As the adage goes, “first in time, first in right”. The case of KPI Manufacturing, Inc. doing business under the name and style Key Largo Car Accessories Center v. Alwin T. Go (IPC Case No. 13-2015-00523) is instructive of the value of establishing priority in one’s bid to cancel a patented design on the ground of lack of novelty.

The controversy stemmed from a petition for cancellation filed by KPI Manufacturing, Inc. (“KPI”) against the “CAR MAT” design registered under Alwin T. Go (“Go”). KPI averred that Go is not the true and original designer of the disputed car mat product. To substantiate its claim, KPI presented images of actual car mats allegedly imported from another manufacturer in China, similar to that of Go’s car mat. KPI claimed that these car mats imported from China constitutes prior art, which effectively prove that the disputed design was not novel and thus, must not have been registered in the first place. KPI further questioned the novelty of the disputed design as it has alleged that Go committed a prejudicial disclosure to third persons when he bought the mold for his car mat design prior to its application.

In defense of his registered design, Go maintained that he is the true and original creator of the car mat product. Go presented evidence showing that he has been working on the car mat design as early as 2013.

The IPOPHL Bureau of Legal Affairs (“Bureau”) reiterated that for any industrial design to be patented, it must satisfy the novelty requirement. This means that such design must not form part of a prior art. The Intellectual Property Code (“IP Code”) sufficiently defines “prior art” as (1) everything made available to the public anywhere in the world before the filing date or the priority date of the application claiming the invention; and (2) the entirety of an application for patent, utility model, or industrial design registration, published in accordance with the IP Code, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application.

The Bureau noted that the evidence presented by KPI does not bear any date, which could signify that the similar car mats imported from China are indeed manufactured or produced before Go’s filing of the application for the disputed car mat design. Therefore, the evidence introduced by KPI failed to establish that the similar car mat product takes precedence over Go’s industrial design. Moreover, the Bureau did not lend credence to KPI’s claim that Go committed prejudicial disclosure upon buying the mold for his design before filing his application. The Bureau found the act of buying the mold as merely preparatory to making the product bearing the new industrial design, and did not involve any kind of prejudicial disclosure.


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