Often a person or a company will develop a product which is a variation on a core theme. The core theme may well be inventive in its own right and thus could well be patented. A patent lasts for 20 years typically from the filing date and should cover the inventive concept as well as some more specific details of the core idea.
However, a product line often needs to revamped and refreshed in order to maintain sales, and this is where protecting the design of the product or article as opposed to the core inventive idea is beneficial.
The outward appearance of the product or article as opposed to the actual inventive idea can be protected through a design registration in the UK or Europe, or a design patent in the USA. Other countries outside of Europe and the US typically use either the registration process or a formal examination process similar to that used in the United States.
When trying to protect a new design, it is critical that all important aspects of the design are shown in the representations or drawings. The general rule of thumb is that ‘if it is not shown, then it is not protected’.
In general terms, a design should typically be shown from the front, the rear, the left side, the right side, top plan, bottom plan, and at least one perspective view. In Europe, a design registration is only permitted to have 7 views, and therefore it is extremely important that those views are carefully selected.
Furthermore, particularly in Europe and the UK, photographic images are now permitted. Although line drawings can be perfectly adequate, if your design does change somewhat during development and manufacture, then the final end product may not be protected by the design if there are differences. By using photographic images of the actual product that will be placed in the market, there is a greater chance that the design registration will be accurate and provide the requisite legal protection.
If using photographic images to represent the design in the registration, the background of the images should be plain and having a good tonal contrast with regard to the product or article being shown.
A European design registration, as well as a UK design registration, is extremely cost-effective. The official fees are reasonably low, especially when compared to a patent application, and in the UK and Europe, there are no novelty searches carried out. It is therefore down to a third party to request invalidation of the patent in light of prior art. However, an invalidity request itself is reasonably expensive in terms of time and preparation of evidence, and as such, it is not a particularly frequent occurrence.
One of the main benefits therefore of obtaining a European or UK design registration is that, for relatively little cost, a National or Regional Monopoly Right is obtained along with a formal registration number which can be placed in the product, literature and any websites in order to deter competitors.
In Europe and the UK, a design registration will also typically proceed to allowance in less than a month, and in some cases days.
In terms of US design patents, specialised drawings are required of the product or article in order to meet US Patent Office requirements. In particular, the drawings do need to show contour lines to reflect the contours or profiles of the surfaces of the product or article.
Inevitably, therefore, this can increase the cost. However, a US design patent will typically proceed to allowance in around 12 months from filing.
In the US, once allowed and the relevant issuance fees have been paid, no renewal fees are then due. A US design patent will presently last for 14 years. However, a European and British design registration will last for 25 years, but renewal fees are payable every 5 years. These renewal fees are not particularly expensive, again making the design registration option a cost-effective procedure.
A design registration or design patent can typically be filed in one country or region initially, before then being filed or submitted in other countries within a 6 month grace period. This grace period is governed under the Paris Convention and applies to nearly all of the major countries and most of the minor countries around the world. Consequently, a raft of filing does not need to be undertaken initially before the product or article is placed on the market.
In the UK, Europe, and the US, it should be noted that there is a 12 month grace period from first disclosure of the new design. However, as a general rule of thumb, this should only be used as an emergency backstop in the event of unintentional disclosure. This is mainly due to the majority of countries still requiring absolute novelty (i.e. secrecy, prior to filing). If a new product design is publically disclosed and then a European design registration is submitted, for example, corresponding design rights cannot then be validly obtained for example in China, since China requires absolute novelty. It is, therefore, safer to file first and then disclose.
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