Designs

Pretty much any type of product, or even parts of products, can be protected with a registered design. In many countries, this includes not only 3D articles, but also 2D designs like graphical user interfaces and logos.

You should seek advice before your design has been publicly disclosed (communicated to others outside of any expressed or implied confidentiality), or as soon as possible if it has already been disclosed.

Maybe, but you should act fast.  Some territories allow you to register a design after it has been disclosed.  This includes the UK and Europe, which provide a 12-month period from the first disclosure within which you may still register a design.

To register a design, you need to file a design application with an Intellectual Property Office (IPO).  The speed of the process varies from country to country.  Some IPOs, including the UKIPO and the EUIPO, do not conduct a substantive examination of design applications and so the design may be registered in a matter of days or weeks. Other IPOs, such as the USPTO, conduct a more thorough examination and hence the process can take between one and two years.

While the rights to the design will always originate from the person who created the design, depending on the country, those rights (and hence ownership of the design) may well be automatically transferred elsewhere.  For example, in the UK, a design created by an employee will typically be owned automatically by their employer.  It is particularly important to ensure that, where multiple parties are involved, there is a contract in place which makes clear who will own the resulting IP (including designs).

There’s no legal requirement to have an attorney prepare and file your applications, but going it alone is risky. Despite their apparent simplicity, design applications are easy to get wrong, for example by filing drawings which inadvertently limit the scope of protection which you hoped to obtain.  This can have significant consequences for your business strategy.  The long-term cost of an error could significantly outweigh the up-front cost of engaging an attorney. In the UK, registered patent attorneys and trade mark attorneys are also qualified to advise on designs and will be able to help get the right design protection for you.

If your business involves creating products which have value in their appearance, then yes! A design right strategy could be critical to your business’ success.  Even if the appearance of your products is a peripheral factor, designs can provide an important additional tool in your IP armoury.   A good designs strategy will also make sure the scope of protection obtained through the designs ties in with your business plan.  Key to this is ensuring that your design registrations represent the right features of your product, and in the correct way.

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