TURKPATENT sheds a new light on ‘immaterial details’ following syringe design appeal

In a decision involving the HSW ECO MATIC syringe, TURKPATENT’s Board of Re-Examination and Re-Evaluation overturned its Design Office’s rejection of a syringe design, introducing a new approach to the novelty assessment of a design’s ‘immaterial details’ and reinvigorating interest in the Turkish Industrial Property Code (6979).

The code entered into force on 10 January 2017, when it laid the foundations for several far-reaching changes to IP rights in the country.

One of its major changes was the introduction of an ex officio novelty examination system for designs, allowing TURKPATENT to review their novelty and decide whether to publish or reject them. 

Understanding designs and immaterial details

As defined in Article 55 of the code, a design is the appearance of the whole or a part of a product resulting from the features of the line, contour, colour, shape, material or texture of the product itself or its ornamentation. Designs that fulfil the novelty and individual character criteria benefit from protection under the code, as per Article 56. This states that designs differing only in immaterial details are deemed identical.  

Immaterial details in design protection are not explicitly defined in either the code or its implementing regulations. However, they can be interpreted as minor and insignificant details possessing minimal or inconsiderable visual value, which are not easily perceived at first glance, and which do not contribute to the visual identity of a design.  

The importance of immaterial details

One of the most common reasons that TURKPATENT’s Design Office cites when rejecting designs after novelty examinations is the existence of differences only in immaterial details between an applied-for design and one featured in prior art.

This stems from the difficulty in distinguishing between immaterial and material details. For example, a slight variation in the shade of a colour or the size of a feature may seem immaterial to the designer but material to the examiner.

How Turkish design law assesses immaterial details

After a design application is filed with TURKPATENT, an examiner assesses novelty using a search engine to look for relevant images and keywords. 

Upon finding design differences with regard to immaterial details only, the examiner issues a search and examination report. Subsequently, the design is rejected partially or totally, and the applicant is given two months to appeal TURKPATENT’s decision.

Decision in syringe dispute reassesses ‘immaterial details’

The TURKPATENT Design Office’s recent rejection of a new syringe design exemplifies the ex officio rejection process.

Novelty examination conducted by the Design Office revealed the existence of a prior art design by the same applicant differing only in immaterial details, and the new design was consequently rejected. However, careful assessments of each design’s individual features and overall impression on informed users revealed that they differed significantly in unique and essential details, suggesting that these differences were far from immaterial. 

The applicant appealed the rejection, and it was overturned by TURKPATENT’S Board of Re-examination and Re-evaluation.

In its decision, the board stated that the applicant successfully developed the prior art design, fulfilling the novelty criteria required for the new syringe to acquire protection under Turkish design law. It further acknowledged that details that may appear non-differentiating at first glance could indeed be of utmost importance.

This redefinition of ‘immaterial details’ emphasizes that even seemingly minor or inconsequential details may be considered unique in design creation, contributing to novel aesthetic features and the designer's signature.  

Renewed focus on immaterial details   

TURKPATENT’s decision shines a spotlight on the complexity of immaterial details and the importance of defining them.

The criteria that an examiner uses to evaluate whether the differences between designs are immaterial and should not be strictly bound by their personal assessment, as details forming a relatively small part of a design – which may not be instantly perceived – may be crucial to an informed user.

The ex officio novelty examination system should be assessed with the understanding that the concept of immaterial detail is not a fixed criterion that can be applied to all designs regardless of their specific elements and individual creation.

A thorough review of novelty should also consider the unique specifications and aesthetic foundations of each design, assessing whether supposed immaterial details may affect its identity. It is further essential to consider an informed user’s perspective when determining whether a design’s immaterial details destroy its novelty.

Clear guidelines and a design-specific approach are necessary for a fair and effective ex offico novelty examination system. 

Note: Citations and references to specific legal sources, case law and guidelines have been intentionally excluded from this revised article.