DESIGNS

There are two different types of design rights – registered and unregistered.

Registered design rights (RDRs) are recorded and made available in a public Designs Registry. Different views of the design are shown, and these provide the scope of protection for the design. If you have a registered design, an infringer cannot claim to have ‘innocently’ infringed your design.

Unregistered design rights (UDRs) are not kept in a public register. UDRs subsist automatically, but have a much narrower scope of protection, provide a shorter term of protection and are more difficult to enforce. For example, unlike infringement of a registered design, you must show that an unregistered design was copied, rather than independently created, to succeed in an infringement action.

There are exclusions for both types of design, which affect whether a particular design is likely to be registrable.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

In order for a design to be registrable, there are certain criteria that must be met. The general requirements are that the design is new and has individual character. This means that the design has not been made available to the public before, and that the ‘overall impression’ of the design on the ‘informed user’ is different to that of other known designs.

Some things are excluded from design protection. For example, a design is not registrable if its appearance is solely dictated by its technical function, or if the design would be contrary to public policy or immoral.

Exclusions can vary in different territories, so for more information regarding registrability, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Formal design searches are not carried out as part of a registered design application. However, if your design is not new, or is too similar to an existing design, then you will not be able to obtain a valid design registration.

We offer design searching services to find designs which may be similar to your own. This can give more certainty regarding whether your design is different enough from known designs, and can help identify whether your design might infringe other registered designs.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Different territories have different requirements for design applications. For example, standardised views of the design being protected are generally required. This normally means providing images of the front, back, top, bottom, left side and right side of the design, along with a perspective view. However, in order to ensure the best scope of protection, sometimes a different set of views may be preferred.

In the UK and Europe, we offer competitive fixed fee deals for preparing and filing design applications, and taking them through to registration. We also offer competitive rates for handling design applications in other countries around the world.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Design applications in the UK and Europe do not undergo substantive search and examination. This means that a design may be invalid if it is not novel or does not have individual character, although other reasons for invalidity exist.

Issues concerning patent validity can arise during cases of patent infringement, where one party has alleged infringement and the other contends that the patent is invalid (and so unenforceable).

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

A design can only be enforced once registered. If you own a registered design, you have the right to stop another party from doing something that would fall within the scope of protection conferred by the figures in the design (known as infringement).

For example, if you have a registered UK design, then you would have the right to stop another party from making, offering, putting on the market, importing/exporting, or using a product including your design in the UK, or stocking such a product for any of those purposes.

In the UK, designs tend to register quickly, within a month or so. In Europe, designs can sometimes register very quickly, sometimes within a few days if using the fast track process.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

Sometimes, designs may be registered for a design that is not novel, or lacks individual character, for example. This can occur because design applications do not undergo substantive search and examination.

In such cases, it is possible for a registered design to be revoked, or partially revoked, by a court or by the relevant Office (e.g. the UK IPO or EUIPO), in light of new prior art that pre-dates an application, for example.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

In the UK and Europe, a design registration initially remains in force for 5 years once registered. It is possible to pay renewal fees to extend the period of protection in additional 5 year increments, up to a maximum term of 25 years.

In other juridictions, renewals and the term of protection can vary. For example, in the USA, registered designs (called ‘design patents’) last for 14 years once registered, and there are no renewal fees due.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.

It is possible to license or transfer a design from one person (or company) to another. Licensing permits another party to use a design, e.g. making and selling a product incorporating the design, without infringing. In return, the design holder can receive a royalty, for example. Assignment transfers the design to another party, and the previous holder no longer owns the design.

Different types of licenses are possible, and the terms can be negotiated according to the value of the design (or design portfolio). Design assignments normally transfer all of the design rights from one party (the ‘assignor’) to the other (the ‘assignee’). Licenses and assignments should be recorded at the relevant Designs Registry once finalised.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified British and European attorneys.