We set out below a short, very general, introduction to designs. Every design situation is different and, as such, although we believe that the material below is generally relevant, we do not recommend relying on the information therein. If you have a particular issue in connection with which you would like our help, we invite you to contact us.
What Is a Registered Design?
Design registration is a means to protect the visual appearance or design of a product.
Designs are registered by a national or international official body. A registered design gives the owner the right to control who can make product having the appearance protected by the registration in the geographical area covered by the design registration.
The three most common reasons for obtaining registered designs are:
- It enables you to take action via the courts against someone else manufacturing or selling products made to the same or a very similar design to that covered by the registration. Litigation is expensive, so the mere threat of litigation can be sufficient to enable a problem of “infringement” to be sorted out quickly and effectively.
- It enables you to sell or licence the right to manufacture a product to a particular design to someone else. This option may be attractive if you do not have the facilities to make a product yourself.
- It is often not possible to protect known products using the patent system. Design registrations are easier (and cheaper) to obtain and may thus give a proprietor some rights to allow them to control exploitation of what they develop.
If you think registered design protection is something in which you are interested, then the first thing to remember is that the novelty requirements for a valid registered design vary widely from country to country. In some countries, the UK and the European Union among them, an applicant can disclose their design to the public up to one year before filing a design application without affecting the validity of the application. In other countries any disclosure prior to application is fatal to the validity of an application. Talking to Gallafents LLP or any other patent attorney is, by virtue of our professional position, deemed to be a confidential disclosure and is thus not regarded as a disclosure that can affect the validity of an application. There are strategies about which we can advise which can balance the need to file an application before disclosing the invention, maximising the geographical scope of the coverage of the application, and controlling the time the design is revealed to the public.
Applying For A Registered Design
To apply for a registered design an application to register the design needs to be filed at the relevant national or international office. That application will need to include certain information and representations of the design applied for.
After an application has been filed, and the relevant fees are paid, the office at which the application was filed may search their collections of technical materials and either indicate that the application is allowable, or issue one or more objections to the application. The amount of searching performed, if any, varies from country to country. If an objection to the application is raised, the applicant (or their representatives) is/are given the opportunity to respond to those objections with a view to persuading the office that the application does meet the criteria for registration, or amending the application so that it does. If an applicant does not wish to continue with an application at any time, the application process can simply be terminated.
How Long Will It Take?
The application process for a registered design will take upwards of one week depending on which country the application is filed in and whether the application faces any objections.
A registered design may stay in force for a maximum period of time, 25 years from the date of application for the UK and European Union, assuming that renewal fees (usually payable every five years) are paid.
A registered design can be a valuable asset. Possession of a registered design does not, however, mean that the design protected thereby is of value or that there is a commercial need for products made to that design.
Identifying potentially registerable designs, advising on the freedom of a client to make a product, checking the likely validity of proposed applications, obtaining, maintaining, licensing, and enforcing registered designs are all areas where we can help. As with all registered intellectual property rights, registered designs are commercial tools and acquiring them may not cost as little as a client might wish, but they may be valuable assets once secured. You can try and apply yourself, but we believe we add more value than we charge. Our charges are calculated on the basis of standard charges for certain standard activities, and on the basis of time spent for other activities. We will provide estimates of our charges for proposed activities either when we propose them, or upon request.