Product Design and Development Management Protecting a design

Protecting a design
by Geoffrey Constable

1 Introduction

Intellectual property rights (IPRs) are based on statute. They include patents, registered
designs, copyright and (unregistered) design rights. Such rights are not mutually exclusive
and one artefact could be protected by different means. Some rights provide monopoly
protection which protects the idea or concept (not just the actual design) and reserves for the
owner exclusive exploitation of the invention for a specified period. Other rights provide
non-monopoly protection - i.e. protection against copying of the design.

2 Patents

A patent provides the only means of protecting an inventive idea or concept. Such ideas or
concepts may relate to products or processes: to machinery, to mechanisms, to electrical or
electronic devices, or to chemical, physical or nuclear processes. Patent law protects an
invention by reserving for the owner of the patent the exclusive exploitation of the invention
for a specified period.

A typical patent is enclosed as Appendix A. As can be seen, the text describes the invention
in sufficient detail for the skilled man to be able to reproduce it. A typical embodiment is
described which is illustrated by drawings. Finally, the specific claims are stated, starting
with Claim 1, which is normally the broadest and thus the most important, and continuing
with other, more detailed claims that describe specific forms or variants of the invention
subsumed within claim 1. The claims are important as they form the basis of any subsequent
litigation.

2.1 Criteria for grant

a) The idea must be new and must not form part of the existing 'state of the art'. (The
application will be barred if the idea has been featured in, say, an earlier patent).

b) There must be an inventive step. In other words, the idea must not be obvious to a person
'skilled in the art'.

c) The idea must be capable of industrial exploitation. For example, an application that
contravenes the laws of physics (e.g. for a perpetual motion machine) will be refused.

d) There must be no prior disclosure of the idea, i.e. the idea must not before the priority date
of the invention (i.e. the date of filing the first application) have been made available to the

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public (whether in the UK or elsewhere). For example, the application will be rejected if it is
discovered that a published magazine article by the inventor describing the idea anticipated
the application.

2.2 Exclusions

The following cannot be protected by patents

a) scientific theories (which, once published, can be used by all);

b) aesthetic creations (for which the registered design procedure or copyright can be used);

c) computer programmes and rules for games (protected by copyright); and

d) the presentation of information (for example - books (including translations), which can
be protected by copyright).

2.3 Procedure for applying for a patent.

a) The Application (to the Patent Office).

The application may be a general statement, without claims, that gives the applicant 12
months in which to file a further, more detailed, application without losing priority.
Alternatively, the applicant may choose to file his detailed application and claims
immediately.

b) Preliminary Examination and Search.

Having been subjected to such examination, the specification, claims and abstract are given
initial publication in order that they can be 'publicly available'.

c) Substantive Examination
If the applicant then wishes to continue with his application he must request a substantive
examination within six months of the date of the initial publication of his application.

d) Grant of Patent
If the application is found to be in order, notice of grant is published in the Office Journal
(Patents) on payment of the appropriate fee.

e) Publication
Publication of the specification in its final form is by its inclusion in the Patent Office Library.
A certificate and Patent Number are awarded at this stage.

2.4 Timescale

The maximum time allowable to the applicant by law for the procedure outlined above is 3.5
years. The life of the patent, when granted, is initially 4 years from the date of filing but this
can be extended on request of renewal to a maximum of 20 years.

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2.5 Costs

a) The filing fee £15

b) On request of preliminary search 90

c) On request of substantive examination 105

d) On request of renewal before expiry of fourth year 82

e) Thereafter an annual fee rising in the final year to 334

The total cost of a

UK patent 2,500

European patent 7,500

World-wide patent 25,000+

2.6 Ownership

For a freelance inventor - the rights belong to the inventor.

For an employee inventor - the rights belong to the employer if the invention is made in the
course of normal duties.

However, under the terms of the 1977 Patents Act, the inventor has a statutory right to
possible monetary benefit if the patent in question is 'of outstanding benefit to the employer'.

2.7 Marking

Manufactured articles and supporting trade literature should be marked with the words 'Patent
Applied for' or 'Patent' with the relevant number.

2.8 Defences against alleged infringement.

It is often assumed that a patent, when granted, gives protection to the invention that is
indisputable. This is not so: some 50% of infringement cases that are heard in Court are
dismissed for one or more of the reasons given below.

a) No infringement.

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The defence may be able to show that the alleged infringement is false. This may result from
a very careful analysis of the true meaning of the claims in the patent-in-suit, or from some
form of differentiation between the alleged infringing product and these claims.

b) Lack of novelty.
It may be possible to show that the patent-in-suit is invalid due to earlier disclosures - either in
previous patents or in magazine articles, conference proceedings or other media available to
the public. (The fact that such disclosures were not revealed during the search and
examination procedures that took place when the patent was granted is irrelevant in this
context).

c) Obviousness.
If it can be shown in Court that the claimed invention would have been obvious to someone
'skilled in the art', the patent-in-suit will be declared 'invalid' and the action will be lost. The
obviousness argument usually rests upon evidence given by an expert witness, plus documents
to show what was 'common knowledge' at the time of filing.

c) Insufficiency
If the information in the patent-in-suit is insufficient to enable the skilled man to reconstruct
the invention in a satisfactory manner, the patent will also be declared invalid.

d) No Fair Basis
A valid patent must have sufficient information in the description of the embodiment, or
elsewhere, for the claims to be 'fairly based' upon the disclosed invention. If the claims exceed
the extent of the disclosed invention, the patent may be declared invalid.

e) Inutility.
If the patent-in-suit describes an invention that is flawed and thus not 'useful', the patent may
be declared invalid.

f) Others
Other defences, which are seldom appropriate, include a lack of marking on the product or its
literature, or errors in the drafting of the patent (for example discrepancies between the
embodiment and the claims, or significant ambiguities in either specification or claims).

2.9 The international scene

Most nations have patent legislation similar to that in the UK - but not all. For example, some
nations permit patents to be granted without examination and search, and rely upon
subsequent Court action to decide validity etc.

In Europe patent business is being handled increasingly by the European Patent Office at
Munich.

3 Registered Designs

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A registered design provides monopoly protection, but only for the visual (i.e. appearance)
design of a manufactured product.

3.1 Criteria for registration.

a) Visual quality
The article must have a design which has 'features which in the finished article appeal to and
are judged by the eye'.

b) Newness
The product must not have been previously published, offered for sale or sold in the UK.

c) No Prior Disclosure.
The product must not be the same as (or very similar to) another design already registered in
the UK, or for which registration has already been received.

3.2 Exclusions

A design shall not be registered in so far as it consists of 'a method or principle of construction
or features of shape or configuration which are dictated solely be the function which the
article has to perform'. Furthermore, 'a design shall not be registered in respect of an article if
the appearance of the article is not material, that is, if aesthetic considerations are not
normally taken into account to a material extent by persons acquiring or using articles of that
description'.

'Sets of articles' may be registered but 'spare parts' are largely excluded, in particular where
their appearance is dependent upon the appearance of the complete article - so-called 'must
match' designs.

Sculptures are excluded (but can be protected by copyright) but casts or models for use in
industrial processes are in scope. In general, design registration is appropriate for such articles
if they are to be manufactured in quantities exceeding 50.

Wall plaques, medals and medallions are excluded as is all matter of a literary or artistic
character, including book jackets, calendars, certificates, coupons, dressmaking patterns,
greetings cards, leaflets, maps, plans, postcards, trade advertisements, trade forms and cards,
transfers, playing cards, labels and the like.

3.3 Procedure for Application

a) The initial application is made to the Designs Registry in London.

b) The application must be accompanied by representations or specimens of the design and,

except in the case of textiles or wallpaper, by a statement of the features of the design 'for

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which novelty is claimed, i.e. whether for shape or configuration or pattern or ornament, or for
a combination of any of these four features'.

c) Examination and Search

This is conducted by staff of the Designs Registry - but only of the UK Registry. If
successful, the design is registered and a Certificate of Registration is issued.

3.4 Timescale

The procedure described above takes 3 - 12 months and may not last more than 15 months.
The registration lasts initially for 5 years but can be extended to 25 years.

3.5 Cost

On application (single article) £12 - 44

(a set of articles) 19 - 81
Extension for a second period of 5 years 100
third 150
fourth and fifth periods To be allocated

3.6 Ownership

As for patents.

3.7 Marking

It is advisable to mark appropriate products 'Registered design no...'

3.8 Defences against infringement.

Defences similar to those described for patents apply. However, the case for infringement is
likely to turn on whether the design in question is a 'fair follower' or, in other words, a design
'which is the same in general style and idea as a protected design, but which differs in detail to
such a degree that it cannot be said that it reproduces the design to a substantial extent'.
Hence fair followers copy, indeed they represent, the trend.

4 Copyright

The copyright concept was explained clearly in the Whitford Report (1977). 'A writer writes
an article about, say, the baking of bread. He puts words on paper. He is not entitled to a
monopoly in the writing of articles about the baking of bread, but the law has long recognised
that he has an interest not merely in the manuscript, the words on paper which he produces,

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but in the skill and labour involved in his choice of words and the exact way in which he
expresses his ideas by the words he chooses'. He can make money by selling copies of his
work. And he can prevent others from doing so (unless they have his permission). 'But if a
reader of the article is stimulated into writing another article about the baking of bread the
original author has no reason to complain'.

Copyright has gradually been extended from books to other forms of literature and to music,
works of art and architecture, films, and radio, television and computer programmes.

In the 1988 Act three main categories are specified.

a) Original literary, dramatic, musical and artistic works.

b) Sound recordings, films, broadcasts or cable programmes.

c) The typographical arrangement of published editions (e.g. street directories, price lists,
advertising material and football coupons).

Copyright gives non-monopoly protection. If two designers were at the same time by
coincidence to create identical patterns for, say, a textile, both would have the right to the
design but would be able to prevent copying by others. Above all, copyright does not protect
ideas or concepts.

4.1 Criteria.

The work must be original.

4.2 Procedure.

No formalities. It is sufficient for the designer to sign and date the work from which the
product is to be made. All records should be kept. It is wise to authenticate the date and the
signature. The date of first publishing (marketing) designs must also be recorded. Copyright
is immediate and automatic. There are no costs.

4.3 Ownership.

Owned by the creator of the drawing unless assigned to the employer or to another.

4.4 Timescale.

Normally the life of the creator plus 50 years.* But for artistic works that are industrially
produced - e.g. a textile - the period of protection is 25 years from the date of first marketing.
"Industrially produced" usually means made in quantities greater than 50.
(* UK legislation changes, to be introduced as a part of the harmonisation of the copyright laws across the
European Union, take effect January 1996 extend copyright protection after death from 50 years to 70 years. The

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legislation is to be applied on a retrospective basis and will cover producers of creative works previously out of
copyright.)

4.5 Marking

It is not necessary in UK law for works on which copyright is claimed to be marked 'C', but it
is good practice. Such marking is required in many other countries.

5 Design Right

Such rights were created by the 1988 Act in order to provide protection for functional designs
that previously had been (unreasonably) covered by copyright. Sometimes referred to as
unregistered design rights or UDs, they can be used for industrial items designed after 1
August 1989 and protect against direct copying.

5.1 Criteria

Originality - as in copyright.

5.2 Exclusions

a) Design right relates only to 'any aspect of the shape or configuration (whether internal or
external) of the whole or part of an article'. Thus the method and principle of construction are
excluded.

b) There is specific exclusion for 'surface decoration'.

c) 'Must match' designs (see 3 Registered Designs) are excluded as are 'Must fit' designs - i.e.
those features of shape or configuration which enable an 'article to be connected to, or placed
in, around or against, another article so that either article may perform its function'. This
exclusion is intended to avoid unreasonable restrictions on the availability of spare parts.

d) Design rights are not available for designs that are 'commonplace in the design field at the
time of creation'. The precise meaning of the term 'commonplace' has yet to be interpreted in
the Courts.

5.3 Procedure

There are no formalities and no cost. However, as with copyright, it is wise to sign and date
the work from which the product is to be made. Such dates and signatures should be
authenticated. The first date of marketing should be noted.

5.4 Ownership

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As with patents.

5.5 Timescale

Protection is provided for the first 10 years from the end of the first year of marketing
(maximum of 15 years from when the design was first recorded). However, licenses of right
(i.e. permitting others to manufacture under a reasonable license agreement) may be granted
after the first five years of protection have elapsed or even earlier should monopoly abuse be
involved.

5.6 Marking

None.

6 European Community Harmonisation.

It is planned to introduce registered and unregistered Community Design Rights that will be
similar (but not identical) to those that obtain in the UK.

The scope of such rights will be broad - '2-D or 3-D features of the appearance of a product
which are capable of being perceived by the human senses as regards form and/or colour'.

Commonplace designs, interconnections and designs contrary to public policy or accepted

principles of morality are to be excluded.

The procedure for unregistered rights will be automatic; for registered rights application plus
presentation of the design will be required, but there will be no examination or search.

Protection for the unregistered design will last a mere three years; the registered design will be
protected initially for five years and renewable for a maximum of 25 years.

There will be no costs for the unregistered rights but a charge (yet to be decided) will be made
for registration.

It is proposed that there should be no marking.

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Disclaimer

These brief notes are intended to provide an outline of the means that can be used for
protecting a design. They are not comprehensive. The details of design protection are
complicated and many important details have not been included in the summary given above.

Any reader who intends to take action in this area is strongly advised to take professional
advice beforehand.

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