You’ve designed a great product that looks fantastic that you don’t want anyone else to copy. So what do you do? One possibility is to file a registered design application.
If you are looking to protect your design on a budget these are the best things to keep in mind. I’ve broken it down in the classic, if slightly re-jigged, who/what/where/when/why format.
Registered designs protect the shape and appearance of things. For a design registration to be valid (and therefore enforceable) the design has to be new and have individual character. “New” means that the design has to be different from existing designs. “Individual character” means that the design gives an overall impression that is different from existing designs. Having a valid design registration allows the owner of the design registration to stop competitors from producing something that gives the same overall visual impression as the registered design. Design registrations can also be licensed to allow third parties to use your design for a fee.
A design registration is great for protecting the appearance of your product, so if the way your product looks is important, think about registered design protection. A design registration will provide protection for all designs that give the same overall visual impression as the design you have registered. Therefore, and perhaps unsurprisingly, the way in which you protect your design is very important; the protection afforded by your design registration entirely depends on images of your design that you file. This is the bit on which you shouldn’t skimp; I would strongly recommend you take professional advice as to the images you should use. Typically, black and white line drawings provide the best protection for the shape and appearance of designs. By using black and white line drawings, there is no limitation to a particular colour or contrast, for example.
In many jurisdictions you can file multiple design applications in one go, and the fees you will pay for the second and subsequent design applications will be less than for the first one. This particular aspect of design registration can help to provide extra layers of protection for your design. For example, it’s not unusual to have one design application using line drawings that shows all of the features of a product, another application using line drawings that show only key features of the product, another application with shading to show contrast between different features of the product [if there is contrast of the product] and another application with colour (if colour is important to the design). In this way, various aspects of the design can be protected.
In some jurisdictions you can also file different applications for different designs in one go and still benefit from the cost saving of a multiple design application. In the UK, you are able to file a multiple design application containing completely unrelated designs, whereas in other jurisdictions which allow multiple design applications (e.g. the EU) the different designs must be in the same design registration classification (the Locarno classification). For example, if you wanted registered design protection for 50 different bath taps or faucets in the EU, you could file the 50 applications in one go, because all of the bath taps or faucets are in the same Locarno classification. It is far cheaper to file multiple applications in one filing than to file lots of applications individually.
A design registration will generally be in force for between 15 to 25 years, depending on the jurisdiction and, in most cases, subject to the payment of renewal fees. In many jurisdictions, renewal fees will be payable typically every five years. Renewal fees will be payable on each design registration. It’s worth reviewing your portfolio before paying your renewal fees to see which design registrations are worth maintaining.
As with most other registered IP rights, there is a priority system that can help spread-out costs if you wish to seek protection in multiple countries. The filing of an application in one country sets a six-month deadline for filing applications in other countries, while maintaining the benefit of the filing date of the original (priority) filing. You therefore don’t have to file design applications in lots of countries all at the outset.
Furthermore, there are also several ways of obtaining registered design protection in more than one country by filing only one application. A Community Registered Design registration provides registered design protection in all of the countries of the European Union. An International (or Hague) design application can cover many commercially-significant countries, such as the EU, USA, Canada, Switzerland, UK, China and Japan, but many countries cannot be covered in an International application (for example, Australia, Brazil, India, Malaysia and the Philippines). The International design application provides a far simpler way of obtaining protection in lots of different countries, although it is important to make sure that your images are suitable for each of the countries covered by the International application, otherwise objections may be raised.
It is generally desirable to file your design applications before there is any non-confidential disclosure of the design. However, in many countries there is a grace period in which you can still validly file your design application if you have made a non-confidential disclosure. Given that a design registration provides protection for all designs that give the same overall impression as the registered design, it is also sensible to wait until the appearance of your product is finalised before filing a design application – you want your design registration to protect your product.
This sounds like a daft question, but you need to know who will be the owner of the design registration. This could be a company or a person. You should also identify all of the people that contributed to the design i.e. the designers. You will then have to ensure that all of the rights of the designers have been transferred to the prospective owner of the registered design. In the UK, for example, if someone is an employee who is paid to design things, then their contribution is likely to be owned by their employer. However, the laws relating to ownership vary from country-to-country, so the same circumstances in another jurisdiction may result in completely different ownership situation. This should all be sorted upfront, before a registered design application is filed. Your patent attorney will be able to help out with this.
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Simon Haslam Of Counsel