New products are not always patentable, but it is important to consider other types of intellectual property protection that may be available to prevent competitors copying your product and that may add value to your company.
The appearance of a product may be protected by unregistered design right and/or design registration.
Both the UK and EU provide unregistered design right in a design by virtue of its creation. The right subsists in the “shape and configuration” of an article or a part of an article (internal or external), and arises automatically for ‘original’ designs, in the sense that the design is “not commonplace” in the design field in question.
However, it does not extend to a method or principle of construction, ‘must fit or must match’ features or surface decoration. The design must be recorded in a design document or an article made to the design for protection to arise.
In the UK, design right lasts for a maximum of 15 years, often being limited to 10 years, with the final five years being subject to licences of right. In the EU, the duration is even less, with unregistered design right lasting only for three years.
Unregistered design right is infringed by making articles to the design or substantially to the design, i.e. by copying the design. Independent creation of a similar design does not amount to an infringement. If you are aware of a competitor that has substantially copied the whole, or part of, your design of product, please get in touch to discuss your options.
A stronger form of protection is registered design. This right provides for a wider scope of protection than unregistered design right but it does not arise automatically – registration at a national or regional office is required, such as at the UKIPO or EUIPO, involving the preparation of representations setting out the features of the design that require protection and payment of official fees.
The right may subsist in the appearance of a product or part of a product, including “lines, contours, colour, shape texture, materials or ornamentation” and thus applies to surface decoration. Many aspects of a new design of product may be registrable, provided the design is new and has ‘individual character’, as judged by the overall impression of the “informed user”. However, functional shapes or interconnections are excluded from registered design right protection.
Protection lasts for a maximum period of 25 years from filing the application, subject to payment of renewal fees every five years.
A registered design provides the owner of the right with the exclusive right to “use” the design. “Use” extends to making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; or stocking such a product for those purposes. Copying of the design is not required; independent creation of a similar design by a third party does not circumvent infringement. Thus, design registrations are easier to enforce than unregistered design rights.
Ideally, an application for registration of your design should be filed before any public disclosure of the design. However, UK and EU design registrations may still be filed within 12 months of your first disclosure of the design. If you have a new design of product, or one that has only recently entered the marketplace, design registration should be considered.