UK: Changes to the UK Registered Designs system – have your say

The UK Designs Registry, part of the Patent Office, is currently consulting on its proposed changes to the Registered Designs Act 1949 and the Registered Designs Rules 1995. The four main proposals are:

• to end substantive examination of UK Registered Design applications

• to allow multiple designs in UK Registered Design applications

• to publish all UK Registered Design applications on or before registration

• to make it easier for a proprietor to restore a lapsed design.

CMS Cameron McKenna LLP and the Association of British Healthcare Industries (ABHI) are working together to provide a response to the UK Designs Registry’s Consultation and we are collating responses from ABHI’s members, clients and other interested parties. If you would like to contribute to the response, please enter our short online survey by copy/pasting the following link into your browser:

http://www.surveymk.com/s.asp?u=722621250963

The closing date for our online survey is 31 August 2005 so please offer your views by that date. If you have any other comments or questions about the proposed changes, please contact us.

To view a summary of the main points of the Consultation, please see below:

Full Article

The UK Designs Registry, which forms part of the Patent Office, has issued a consultation on proposed amendments to the UK law on registered designs (the "Consultation").

The Registered Designs Act 1949, which was substantially changed in 2001 to implement the EC Directive on the Legal Protection of Designs, currently governs the registration and protection of UK Registered Designs. The Registered Designs Rules 1995 are procedural in nature and regulate the UK Designs Registry's activities. For example, they set out the procedure for making an application for a UK Registered Design in accordance with the Registered Designs Act 1949.

Since April 2003, it has been possible to register designs as registered Community Designs. The Community Design provides a unitary right covering the whole of the European Community and has proved very popular since its launch. Since the advent of the Community Design, applications for UK Registered Designs have fallen by approximately 60%. The Community system represents a modern and more liberal approach to the procedural requirements and many of the proposed changes to the UK regime attempt to recreate a similar system in the UK.

The purpose of the proposed amendments to the UK law is two-fold: (i) to ensure that the UK designs system survives and, therefore, offers a useful and cost effective alternative to the Community Design; and (ii) to encourage and retain registrations by small and medium enterprises, which account for the majority of applicants at the UK Designs Registry.

The UK Designs Registry's proposed changes to the Registered Designs Act 1949 and to the Registered Designs Rules would change the UK law on registered designs as set out below.

The four main proposed changes are as follows:

1. Ending the substantive examination for novelty

Since 1999, the UK Designs Registry has not carried out an automatic search of earlier designs as part of the examination process. The practice has been to raise lack-of-novelty objections only where it is self-evident that a design is not new. As a result, only approximately 10% of applications for registration are examined for novelty.

Before the significant changes were made to the law of designs in 2001, only prior disclosure of the design in the UK would prevent a design from being registered as a new design. However, since that time, a prior disclosure of the design anywhere in the world could be sufficient to invalidate a later registration of the design in the UK. As such, even if the UK Designs Registry does carry out an examination of earlier registered designs, this provides little comfort that novelty exists in the design applied for.

The Consultation document points out that even in a situation where the UK Designs Registry does raise objections on the grounds of lack of novelty, the applicant will often register a Community Design (where there is no examination) instead. The Consultation therefore proposes that the UK Designs Registry ends the substantive examination of design applications for novelty.

2. Allowing multiple design applications

Under the present system, only one design can be included in an application for a UK Registered Design. This is different from the Community Design system, which allows for multiple designs (but only in the same class of products) to be included in a single application. The UK Designs Registry's proposal is to allow multiple designs for different types of products (i.e. not just in the same class) in one application.

If the proposed changes are made, it will make the application process simpler for the applicant and the UK Designs Registry because the information that is common to each design (e.g. name/address etc) will only need to be given once. It is intended that the change will make the registration of multiple designs easier and cheaper for applicants, which will therefore make the UK Registered Design more attractive to UK businesses, particularly small and medium enterprises.

3. Publish all Registered Design applications on or before registration

Currently, for historical reasons, only designs for the following classes of products are not published on or before registration: textile products, wallpaper, similar wall coverings and lace. The Consultation proposes that all designs are published on or before registration.

This will have the benefit, especially in light of the fact it is proposed that applications are not examined for novelty, of allowing interested third parties the opportunity to challenge the validity of a registered design. The downside will be that it will make it easier for counterfeiters to create counterfeit designs before the original products are released onto the market.

To provide applicants with a degree of control over the timing of the publication and registration of their designs, the UK Designs Registry will require consent from the applicant to publish any representation of a design filed. The withholding of consent would delay registration until the design is published.

4. Facilitating the restoration of lapsed design registrations

If followed, this proposal will make it easier for a proprietor of a UK Registered Design to restore a registration that has lapsed. Currently, a proprietor must show that he has taken reasonable steps to pay the renewal fee (even though he has failed to pay the renewal fee). It is proposed that, in the future, an application for restoration should be granted where the proprietor is able to show that the failure to pay the renewal fee was unintentional.

The proposals are being made as a Regulatory Reform Order (RRO), which requires the Minister making the RRO to consult industry groups and any other interested party on the suggested changes. The Consultation must ask whether the proposed amendments remove any "necessary protection" or any "rights and freedoms" (which a person might reasonably expect to enjoy). As such, the Consultation questions are directed at answering these two points, although the real issue is whether those persons responding to the Consultation approve or disapprove of four changes outlined above.

A copy of the full Consultation document is available here.

The Association of British Healthcare Industries (ABHI) is the trade association for the medical device industry in the UK. The Secretary of State for Health has specifically asked that the ABHI be included in the Consultation process as the results of the Consultation could have an impact on the healthcare industry and, in particular, manufacturers of medical devices.

CMS Cameron McKenna LLP is assisting the ABHI in responding to the Consultation and collecting responses from medical device manufacturers and other interested parties. If you or your organisation would like to respond to the Consultation through the ABHI, please enter our short online survey.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

The original publication date for this article was 04/08/2005.