July 2005
Designers to have their say on protection
The Patent Office is asking designers and lawyers for their view on suggested changes to the registered design system in the UK. The proposals for change are wide ranging but two in particular appear to be as a result of the success of the European system which has highlighted two deficiencies of the UK system. Now may be the chance to improve protection for designers and get a better deal from the Patent Office.
A registered design helps designers protect the appearance of their design and is a useful tool against copying. Registered Designs have been available in the UK for many years and all types of designs can be registered as long as they are novel and have not been shown in public or been on the market for more than a year. On successful registration a designer is entitled to protection for a term of up to 25 years and subject to payment of renewal fees every 5 years against anyone who copies a substantial part of their design.
On the 1st April 2003 a system for registering designs in all countries in the European Community in one application was introduced. While both the community registered design and a UK registered design operated in a similar way there are presently two distinct advantages which apply to community registered designs which are not available for UK registered designs.
The first is that an applicant for a community registered design can apply to register multiple designs in one application. In this event the fees payable are subject to a sliding scale depending on the number of designs applied for. The effect of this is that designers can register ranges of goods and collections and make significant savings. The current fee for registering a community design is approximately £160 for the first designs; however this fee is reduced by half for each subsequent design up to 10 designs and by 78% for the eleventh and subsequent designs.
In the UK it is not possible to apply to register multiple designs in one application and a separate filing needs to be made for each design. As the filing fee is typically £60 per design, it can cost more to obtain a UK registered design than a community wide registration.
A further advantage of the European system is that it is possible to delay the publication and subsequent registration of an application by up to 12 months. This is a useful mechanism for designers who wish to ensure they secure protection but who are not yet ready to launch a product and do not wish to give competitors advance notice of their designs. A similar provision in the UK rules would assist designers overcome these timing issues.
BRIFFA Comment:
Changes which bring about a cost saving for UK applications and provisions for delayed publication and registration would both be extremely positive moves from which designers would benefit.
Comments are invited by the Patent Office by the deadline of 7th October 2005. A consultation paper is available at www.patent.gov.uk/about/consulatations/mod-design/index.htm