Designs Flashcards
What right does a UK Registered Design Right give you?
A registered design is a MONOPOLY right
How may a design be registered?
s1(1) A design may be registered by making an application for registration under this Act.
Registration uses form DF2A. Up to 12 views of a design can be filed.
Multiple designs can be filed at the same time, with subsequent designs in the same application costing less to file.
What is the definition of a ‘design’?
s1(2) A ‘design’ means the APPEARANCE, of the WHOLE or PART of a PRODUCT, arising from such features as lines, contours, colours, textures, or materials of the product or its ornamentation.
The product’s appearance does not need ‘eye appeal’, the product can appear prosaic.
Protected emblems cannot contribute to a registered design, these include the Olympic symbol, and national flags
What is the definition of a ‘product’?
s1(3) A ‘product’ is any industrial or handicraft item (other than a computer program); including packaging, get-up, graphic symbols, typefaces, and parts for assembly into a so-called ‘complex product’ - which in turn is an object that can be (re)assembled from two of more replaceable parts.
Each part of a product can be registered separately
What are the requirements for a design to be registered?
s1B(1) A design can be protected to the extent that:
s1B(2) … it differs from prior art designs by MORE THAN IMMATERIAL DETAILS, and…
s1B(3) … its OVERALL IMPRESSION on an INFORMED USER differs from the over all impression of any prior art design…
s1B(4) … taking account of the DEGREE OF FREEDOM available in creating the design.
I.e., a design must have a material difference over the prior art that results in a different overall impression.
Novelty includes existing published designs registered in different classifications.
Novelty is NOT absolute - excludes materials that could not have been reasonably become known to EEA business in the relevant specialist sector
Must be new and have individual character over existing UK or community registered design application (which may not yet have been published)
How is novelty and individual character assessed for a complex product?
s1B(8) For a product forming part of a complex product, assess the novelty and individual character of what is VISIBLE during NORMAL USE.
s1B(9) …where normal use is by the end user, but not by maintenance, servicing or repair work.
Who is the ‘informed user’?
The informed user is someone experienced with the products in question and with the designs and relevant design constraints in that field.
What is a complex product?
A product which comprises at least two replaceable component parts permitting assembly and reassembly.
Normally they are user-removable/user serviceable parts.
What exclusions are there for Registered Designs?
appearance cannot be solely dictated by technical function
does not protect those features required to fit “must fit” (apart from modular systems)
cannot be against public morality
s1C(1) A right in a registered design does not subsist in those features in those features of a product whores appearance are solely dictated by the product’s technical function.
s1C(2) A registered design does not protect those features required in order to connect to or fit (i.e. to place in, around or against) another product so that either may perform its function …
s1C(3) …except in the case of features enabling mutually interchangeable (modular) systems.
s1D cannot register a design contrary to public morality
What is a prior art disclosure in relation to Registered Designs?
s1B(5)(a)(b) A design is disclosed by any public dissemination (publication, exhibition, use in trade, etc) prior to the application date, UNLESS…
s1B(6)(a) … this would not reasonably become known in the normal course of business within the EEA, IN THE SPECIALIST SECTOR of the design, or
s1B(6)(b) it was disclosed in confidence, or
s1B(6)(c)-(e) it was disclosed by the designer, or by anyone GIVEN, ENTITLED TO or ABUSING information FROM the designer WITHIN 12 MONTHS prior to the application or priority date.
Summary:
Needs to have been not disclosed before in the EEA, or if outside the EEA, would not have reasonably become known within the EEA in the normal course of business in the sector concerned.
Effective 12 month grace period, but needs to be filed at the UKIPO either directly or via a PCT.
Who owns a design?
s2(1) The author (creator) of a design is the original proprietor UNLESS…
s2(1B) …IF created by an employee in the course of their employment, in which case the employer is the proprietor.
s2(2) Ownership can be assigned to or shared with another party and that other party is treated like the original proprietor.
s2(4) For computer generated designs, the person making the arrangement necessary to give rise to the design is deemed to be the author.
How can you register a Registered Design?
s3(1) An application for the registration of a design or designs shall be filed at the Patent Office.
s3(3) If a UK unregistered design right exists in a design, then that design must be registered by the unregistered design owner.
s3(5) Failure to properly complete an application will eventually result in it being abandoned.
What is the date of registration or a registered design?
s3C(1) The date given to a completed registration is the date on which the UK application was deemed to be made, BUT…
s3C(2) … if the effective date for the purpose of evaluating prior art is earlier then…
s3C(3)(a) if this is due to a priority claim, the date of REGISTRATION is (still) the date of the UK application;
s3C(3)(b)(c) if this is due to splitting an initial UK application (see s3B(3)) or validly amending the design to satisfy registration requirements (see s3B(5)) such that a new application is filed, the date of registration of the new is the date of the initial UK application.
Summary:
Registration date is the application date, but a priority claim moves the date at which prior art is assessed (like in patents)
What right is given by registration?
s7(1) and (3) The registered proprietor is entitled to exclusive use of the design AND any design that does not produce a different overall impression on the informed user (taking account of the degree of freedom in creating the design), where…
s7(2)(a)-(b) … ‘use’ means making, offering, putting on the market, importing, exporting or using a product incorporating the design or to which it is applied, or stocking the product for any of these purposes.
s7(4) These rights are subject to any limitation by the registrar or courts relating to partial invalidity, or any partial disclaimer in the application.
How is a registered design infringed?
s7A(1) Any UNAUTHORISED act falling under s7 above is an infringement, UNLESS…
s7A(2)(a) … the act was private and non-commercial, or
s7A(2)(b) done for experimental purposes, or
s7A(2)(c) it was a reproduction for teaching purposes, PROVIDING (3) the source is mentioned, and the act does not unfairly prejudice normal exploitation of the design, or
s7A(2)(d) it is for use on foreign ships / aircraft temporarily in the UK, or
s7A(2)(e) it is the importation of spare parts for such ships / aircraft, or
s7A(2)(f) is it the repair of such ships / aircraft.
s7A(4) Exhaustion of rights applies once a product has been on the market in the EEA without the proprietor’s consent
s7A(5) Where a registered product is a component of a complex product, it is not an infringement to use that part in repairs to restore the original appearance of the complex product.
s7A(6) Infringement only applies back to the date on which the certificate of registration is GRANTED.
