The UK IPO has today announced changes it intends to make to the UK designs system, following a major consultation.
The changes aim to modernise the system, making it simpler and more effective to protect designs, whilst retaining the speed and cost-effectiveness that the UK registration system offers.
The most significant changes are as follows:
- Targeted search and examination procedure
The UK IPO will be given the power to conduct a search and examination of a design on the grounds of novelty and individual character in some circumstances.The UK IPO does not currently examine an application on these grounds, making it easy to obtain a registration for a design that does not meet these requirements and resulting in a high number of invalid designs on the register.In practice, this will be limited to designs that are obviously lacking novelty or individual character so as to maintain a quick and low-cost design registration system, however this should go some way to address the evident issue of anti-competitive filings.
- Better protection for digital designs
In line with recent changes to EU design law, the current legal definitions of “design” and “product” will be amended to clarify that digital designs, such as graphical user interfaces and animations, fall within the scope of registered design protection.Improvements will also be made to aid the protection of these types of designs through technical solutions such as different types of file formats and an optional description. Aligning the UK with other jurisdictions in this regard will not only allow for clearer representation of a digital design but will also help to address concerns over claiming priority.
- Longer deferment period
A new 30-month deferment period will allow designers to apply for protection and keep details of a design confidential for longer, bringing alignment with the EU and international design systems. This will facilitate filing strategy, reducing complexity and allowing designers to protect their designs in multiple jurisdictions under a single timeline.
- Targeted simplification of unregistered designs without reducing the breadth of protection
Following consultation, it is recognised that maximum protection is more important for designers over simplification. As a result, some of the more drastic changes that were consulted on, such as the proposal to abolish UK unregistered design right, have been removed. Further consideration will, however, be given to the options for simplifying the unregistered designs framework, and, as a minimum, qualification requirements and term of protection will be harmonised.
- Disclosure
Whilst the uncertainty around whether a single disclosure can give rise to unregistered design protection in both the UK and the EU will not be addressed in the changes (this will be left to develop through case-law), legislation will be introduced to allow the creation of Supplementary Unregistered Designs (SUD) following disclosure anywhere in the world.
- Introduction of small claims track for registered design cases
The small claims track of the Intellectual Property Enterprise Court (IPEC) will be expanded to include straightforward registered design cases, provide low-cost access to justice for designers and lifting barriers to enforcement.
Whilst there is still further work to be done and it will take some time for the changes to be implemented (many of which require changes to primary legislation), this is a positive step forward in improving the UK designs system and the benefits it has to offer.
Please feel free to get in touch with our Designs Team for further information or assistance.
