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Do I have to identify the designer?
It is possible to waive the name of the designer when filing a European Community Design, but you should be sure that you have the rights to the design

Patents and Designs – A comparison

by | Feb 7, 2014

Patents or Designs - A comparison

What is the point of a Registered Design? If a patent offers much broader protection for your invention, why would you ever want to apply for a design instead? Well, the truth is that a design is not necessarily just a “poor man’s patent”, but is actually a different form of intellectual property protection to a patent. Let us begin by considering what patents and designs are for.

Protection

A patent protects an underlying inventive concept of a particular invention. Upon obtaining a patent, you will be able to prevent other people from profiting from your inventive concept without your approval. In essence, the patent grants you a monopoly over the inventive concept, and it therefore has the ability to offer the broadest scope of protection of any form of intellectual property. Patents can therefore protect both products and processes, e.g. a method of making or doing something.

On the other hand, a design only protects the look or appearance of your product. If there is no particular technical feature which is novel or inventive about your product, but that there is a distinct style or visual appeal which you feel others are likely to want to copy, then you should be considering applying for a design.

To illustrate the point, we could put ourselves in the shoes of the Union of European Football Associations, better known as UEFA. You have commissioned a beautiful trophy for your flagship international competition, the UEFA European Championship, and do not want any of the other administrative bodies using the same design for their own championships. You have obviously not invented the trophy as a concept, so you need to protect the look of your trophy instead. The way to do this is to register a design instead, thereby preventing copycat trophies from appearing in the protected territories.

Whilst the above example may appear churlish, it demonstrates that there are some things which are not able to be protected by a patent. If you have expended significant resources in developing a particular design, then by not protecting your design, you leave yourself open to copyists, which will diminish the return on your investment.

Indeed, since a patent protects the underlying inventive concept of your product, the reverse holds true – the look of the product is not being directly protected. Therefore, it is prudent to consider a design for any product which has a distinct aesthetic appeal which you would not want a competitor to copy.

Novelty and Inventiveness

Because a patent protects an inventive concept rather than a particular product per se, there are strict requirements regarding patentability. To obtain one, you must prove that your invention is both novel, i.e. unique, and inventive, i.e. not obvious.

For a design, protecting only the look of a particular product, there are less onerous restrictions on what is permissible. For instance, for a European Community design, the design must be novel and have ‘individual character’, i.e. something about it that distinguishes it from other designs which are available on the market. Notably, the obviousness restriction is not present for a design, at least in Europe.

Cost

One of the major differences between the patent and the design is cost. Certainly in Europe, the official fees payable in order to obtain a patent are much greater than those required for a design, and ongoing prosecution costs during the examination process for a patent. Designs can be somewhat more expensive in territories with more rigorous examination procedures, such as the US, but designs are invariably cheaper than patents.

This is not entirely unsurprising; the old adage that you get what you pay for certainly holds, since a patent should offer more robust protection for an invention than a design can.

Timescales

In contrast with the patenting process, which, in the UK, typically takes 4 or more years from filing to obtain grant, designs generally require minimal examination. Notification of registration of a European Community Design, assuming there are no objections, may occur within a couple of weeks of filing for the design, and sometimes even more quickly than this.

In some territories, there may be a more rigorous examination procedure. For example, a US design may take of the order of 12 months from filing before the design will be granted, however, obtaining a design is still much faster than obtaining a patent.

Using your Design

Designs are a useful tool for warding off competitors who would otherwise copy the look of your product for their own gain. This can be a particular problem if someone is making cheap replicas of your product, and attempting to trade off your goodwill. In particular, a registered design can be useful in protecting the packaging of your product; competitors selling cheap replicas may utilise near-identical packaging to attempt to conflate your product with their product in the minds of the public. Whilst in this scenario, there may be a case for pursuing an action for passing off, having a registered design may allow you a more practical and cheaper route to removing your competitors product from sale.

Having a registered design will allow you to robustly pursue the competitor for infringement, if necessary. Additionally, if you find the competitor presenting a blatant copy of your design at a reputable international trade exhibition, the organizers will be obliged to instruct the offender to remove the copy from display and may also impose stronger sanctions, if you are able to present them with a registered design certificate. A similar scenario holds true for copies appearing on auction websites, such as Ebay, or eCommerce websites such as Amazon. It is much easier to have these listings removed if your design is protected.

Patent and Design?

The above discusses the case for which you want to protect an unpatentable product. However, is there value in applying for both a patent and a design for the same invention? It may seem wasteful, but there may be solid commercial reasons for doing so.

Let us now jump into the shoes of Alexander Graham Bell. You have invented the telephone, and subsequently applied for a British patent. You have since realised that you are about to revolutionise the communications industry, so you also file an international patent application via the Patent Cooperation Treaty (PCT) claiming priority from the British patent application. You now have thirty months from the priority date before you are required to convert the PCT application into national phase applications around the world, so you concentrate on other commercial aspects of your business.

Unbeknownst to you, your unscrupulous supplier has begun selling telephones all around the globe, and has applied for a patent and a design in their own country for the telephone. Upon finding out, you realise that you are unable to bring legal action against them to cease their sales until your patent has granted, which may be several years down the line. Whilst you hold the rights to the telephone, applying for revocation of their duplicitously acquired intellectual property can be an expensive process.

This situation could have been prevented by registering a design in your supplier’s country prior to beginning the manufacturing process. Since designs grant relatively quickly, you would have a sound legal grounding with which to prevent the supplier from selling the telephone, and thereby denying them the chance to gain a market foothold and steal business away from you. Whilst this may seem a fanciful proposition, real stories such as this are unfortunately not unheard of.

In an ideal world, you would register designs for all of your products, and patents for all of your ideas. However, all things considered, intellectual property can represent a reasonable expense, especially for a small business. A design can offer the cheaper protection that you need to prevent copyists from stealing the style of your invention, or may be useful in a broader intellectual property portfolio in conjunction with a patent to deter theft of your ideas. Whilst a patent is more potent, a design may be more desirable, if funds are limited.

For an overview of the various intellectual property rights available, and what each is for, the EUIPO (formerly Office for Harmonization in the Internal Market (OHIM)) have produced a neat graphic, the Intellectual Property Metro, to attempt to clarify the differences between the various types of intellectual property.

If you would like more information regarding designs, then please see our other articles below.

Alternatively, contact one of the attorneys at Albright IP for more advice.

Summary:

Patents
+ Broad scope of protection
+ Protects an inventive concept
– More expensive
– Can be slow to grant
– Cannot protect the look of the product per se

Design
+ Cheaper
+ Quick to grant
+ Can protect otherwise unpatentable products
– Only protects look of product
– Cannot protect abstract ideas e.g. methods of doing something

Related Pages: Six registered design disasters, and how to avoid them, Overall impression in registered designs, Scope of European Registered Design Confirmed, Design Registration in Europe and the US