The UK Intellectual Property Office (IPO) is generally known for granting patent, design and trade mark rights based on suitable applications. It is perhaps less well-known for invalidating or revoking those same rights, which can be more cost-effective than achieving the same thing through the court system. A recent design hearing decision (O/086/17), issued near the end of February 2017, serves to show why you should consider filing for both patent and design protection before your product is made available to the public.
What happened?
A US patent application for a baby toothbrush was filed in April 1996. The application was granted a year later in April 1997 under the patent number US5,615,443. The patent has changed hands a few times, but will expire on 1st April 2017 – it probably is time to change that toothbrush, after all.
A grand total of nearly 13 years after grant of the US patent, in March 2010, Brushbaby* filed a UK design application to protect the external appearance of the toothbrush, presumably having reached a commercial agreement with the proprietor of the US patent. The UK design application subsequently became registered, before more recently becoming the subject of an invalidation action, which succeeded.
Why was the design found to be invalid?
A design needs to be “new” (i.e. non-public) at the time of filing. The decision runs through some of the nuances of UK exceptions to public disclosure. The relevant test here is whether a design ‘could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned’.
The UK design application included the same images of the toothbrush as originally presented in the US patent. There were also a couple of supplementary drawings not found in the US patent, but the Hearing Officer found that those ones were “unclear and they do not clearly show any material difference in the way in which the product has been made”. In other words, the additional drawings did not serve to establish a different scope of protection for the design.
The decision reached was that there was prior disclosure, due to the US patent publication, seemingly on the basis that the USA was ‘too large to ignore’ (see point 25 of the decision). Therefore, since the drawings were identical, the design was not new, and so the Hearing Officer ordered that it be struck from the register, subject to appeal (it is still listed as registered as of 16th March 2017).
Not so much toothpaste as ‘copy and paste’
The lesson to learn here is that design protection needs to be taken as seriously as patent protection. The same basic rules apply – file for protection before you disclose your product publicly. Otherwise, you may not be able to register your design, and if you do it is likely to be invalid, i.e. unenforceable.
It is worth bearing in mind that you may still be able to protect a design if it differs in some way from an already-disclosed design. The test in the UK and Europe is whether the design confers a “different overall impression on the informed user”. Also, it is possible to seek US design protection from a pending US patent application. Therefore, all may not be lost if you need to obtain design protection after your design has become public, but you should seek advice quickly.
If you need advice on getting design protection for your product or packaging, please contact us today to speak with one of our qualified attorneys.
*Note that the decision (O/086/17) wrongly refers to Bushbaby Ltd – The proprietor of the UK design is listed on the UK Design Register as Brushbaby Ltd.