My Design Looks Great - How Do I Protect It?Robert McDougall of Phillips & Leigh explains the finer points of design protection
What is the difference between a patent and a design?
Patents are primarily directed to protecting how your product works, or protecting the steps you use in a method of manufacture or other industrial process.
A patent application is usually going to be a wordy document, often with some diagrams, describing the new ”clever bit” behind your product or how it is made.
Designs protect the aesthetic look of the product – either the whole or part of it. If you have a product design where the look is particularly influential to its sales, you may wish to consider applying to get your design registered. A registered design application is focussed on the external look of your product and typically includes a number of illustrations of it from different view-points, to show what the product looks like.
I have a product, what should I apply for – a registered design or a patent?
The answer to this typically depends upon what is important about your product, how long you want protection for and obviously – your budget! If your product has more than one selling point because it both looks appealing and functions innovatively, then it is advisable that you consider protection for both of these aspects independently through both a patent and a registered design.
If you only have registered design protection but not patent protection, then someone could make the same type of device operating in exactly the same way but change its outside appearance and they would not be infringing any of your registered IP.
Conversely, if you had a granted patent but not any registered design protection then someone could make a product operating in a different way than that described in your patent but in the same unique shape of your product and not be infringing any of your registered IP.
What countries can I get registered design protection in?
Registered designs are available for most of the major industrial countries. For example, the UK Intellectual Property Office (UKIPO) can issue a UK Registered Design (UKRD) and equivalently in the US the US Patent and Trade Mark Office (USPTO) can grant ‘design patents’. Similarly to patents, there is currently no single worldwide registered design right. However, unlike patents you can get a European registered design that is a single right covering the whole of the European Union. This is called a Registered Community Design (RCD).
What rights does my RCD give me?
If your RCD application is registered, you have exclusive rights to ‘use’ the design throughout the EU. This includes not only the right to stop others from deliberately copying the design but also from using a similar design even if they came up with that design themselves. The term ‘use’ includes making, offering, putting on the market, importing, exporting, using a product incorporating the design (or having the design applied) and stocking the product for these purposes.
How long does my registered design last for?
A UKRD or RCD can last up to 25 years from the filing of your registered design application, with renewal fees payable every 5 years.
Can I protect more than one product variant in my registered design application?
Yes. Currently you can put multiple different design variants of your product in a single RCD application although the products must be of a similar type (for example you can’t put a handbag design in the same application as a design for a spade, although you could file a single RCD application for 3 different types of handbag or, in many instances, three different types of garden tools).
You pay a higher fee the greater the number of design variants, but there is an element of “bulk discount”.
Do I have to apply for a registered design to protect the look of my product?
No, but it is highly advisable to do so if you want stronger protection on a long term basis including registered proof of ownership and protection against more than just deliberate copying.
There are some ‘unregistered’ design rights, for example the Unregistered Community Design (UCD) that automatically exists in principle for your design and is effective across the whole of the EU.
The UCD however exists only for 3 years from the first disclosure of your design to business circles specialised in the sector concerned operating within the EU. UCD also requires you to prove that you conceived the design yourself or have acquired it from the original designer and that the person copying your design has in fact deliberately copied it rather than having developed it by themselves.
If you want to rely on design protection to stop counterfeiters copying your product, then it is highly advisable that you apply for registered design protection rather than relying on any ‘unregistered’ rights.
Are registered designs cost effective and how long does it take to get a registered design?
Registered designs, either a RCD or a UKRD are typically a lot cheaper to obtain than a granted patent. This is particularly evident for a European ‘Registered Community Design’ (RCD) when you think about the cost per country covered by the registration!
The RCD and UKRD are not examined against existing similar designs and therefore you can typically expect to get registration within a few months (sometimes even just a few days) of filing your application.
This article does not constitute legal advice. For more information, please visit the Phillips & Leigh website via the link below.
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