resources - designs
page last updated: 24 Sep 2008

see also IPAN copyright resources

protecting your designs

by John Grant and Peter Jackson (Trevor Baylis Brands)

Lone inventors and SMEs often seem to overlook or forget that the most advantageous way of protecting the fruits of their labour may be found in registered designs

While they may fully appreciate that very good advice may be obtained by consulting the Patent Office web site or by consultation with a Patent Attorney, the outcome is often the filing of a patent application when a registered design application might have been the most economic way forward. This is especially the case where there is little or no technical content to a new development that will rely on its aesthetic appeal and utility for success in the market place.

This state of affairs may arise because an inventor/designer is more aware of patents and may be completely unaware of the full benefits of seeking design protection for his development; this despite any expert advice they may receive from the UK Intellectual Property Office or a Patent Attorney

With the introduction of the European Community (EC) Design protocol that facilitates the inclusion of manifold designs within one application, it has proven to be a most expedient and cost effective route for the lone inventor and SMEs, neither of which may have the resources, financial or otherwise, to undertake the filing and continued prosecution of an extensive patents portfolio.

The recent introduction of similar provisions by the UK Designs Registry provides a further incentive for the lone inventor and SMEs to undertake the filing of registered design applications.

It is also a route that has proven to be most attractive for large enterprises, not least for the savings to be made in expense and time. One recent Community application, filed in by the writer hereof for a large International Company, included in that single application representations of nine different roofing components that made up the complete tiling requirements of a roof, the components thereof being complementary one to another.

Filing of a UK or a Community Design application may be undertaken within twelve months of a product forming the subject of the design being commercialised. However, care must be exercised in regard to the possibility that a UK and/or Community Design application may be used as the priority basis for further design, utility model or design patent applications in other territories under the provisions of the International Convention. This is because those other territories may have differing requirements in relation to disclosure before filing of an application in the UK and/or EC that may subsequently be used for claiming priority under the International Convention.

The representations to accompany a design application may be line drawings of sufficient elevations of the subject of the application to enable anyone to appreciate the full shape and configuration of the protected design. The representations may also be those produced by CAD or photographs of the subject where the photographs are taken against a plain background.

The designs for which protection may be sought are many and varied and include such items as:-

a)      containers for perfumery or drinks;

b)      pattern and ornamentation applied to crockery of any shape and configuration;

c)      paving stones;

d)      golf trolleys;

e)      key rings;

f)        IPOD stands; and,

g)      loud speakers.

Advice on how to assess the best way to process an application may be obtained from the Designs Registry, or from a Patent Attorney, who may if required also attend to the preparation and filing of an application, albeit with the added expenditure for their input. If a lone inventor/designer considers that they would prefer to use the services of a Patent Attorney, they may request a quotation for such services before issuing instructions to the Attorney.

Compared with obtaining a granted patent the cost savings in gaining design registration arise in part from the modest Official Fees (for example, for a single design, or the first design of a series, an application fee in the UK is currently£60.00, or an up-front registration fee of Euros 230 – about £160.00 – in the EC) but also from the much simpler procedural steps and the reduced time and effort these demand from the applicant and Attorney.

In the case of a Community registration there is also the huge saving of just one set of fees and procedures being required to complete protection covering all of the EC member states.

Upon registration of a design by the UK Registry and/or the Community Design Office (OHIM), the initial term of protection is for five (5) years with provision, upon payment of requisite renewal fees, to extend the period of registration for four (4) further terms of five (5) years giving a maximum period of twenty-five (25) years in total.

From the above, it will be readily appreciated that the ability to protect a design throughout the whole of the EC for a modest outlay, even when using the services of a Patent Attorney should not be overlooked or forgotten as potentially the most advantageous option for lone inventors and/or SMEs.

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page last updated: 24 Sep 2008