Industrial designs: on the prior art of the whole as regards the part, and vice versa

Abstract

The study addresses the application of the principle of novelty to industrial designs, focusing on the question of prior art in complex products: whether the application of a design to a complex object is prior art for the application of that same design to a part of that object, and whether the converse holds. It follows a series of earlier analyses by the author on originality, novelty, interconnection of systems, must-match parts and the protection of complex products. It covers the absence of uniform treatment at the international level in matters of industrial design, article 25 of TRIPS, the regime of Law 9.279/96 and the granting of registration without substantive examination, compared with the compulsory examination under Law nº 5.772/71, as well as foreign scholarship and precedents on registered designs. It holds that the filing or public use of an industrial design applied to the whole of a complex product constitutes prior art and bars the registration of the same design applied to a part of that product, and the same applies to the converse situation, unless the relevant public perceives the part as not analogous to the whole.