You looking at me? Differences in registered design protection in EU and UK, compared to the US

Registered design protection in the EU and UK, and design patent protection in the US provide cost-effective and valuable protection for the appearance of commercially-valuable products. Simon Haslam and Ellen Streekstra look at some of the similarities and differences between US and EU/UK law and practice, and how they may affect a design owner’s commercial decisions.

What’s the same?
It is possible to obtain a registered right in the EU, UK and the US that protects the appearance of a product in which the design of the product is not totally functional. In the UK and the EU, this right is known as a registered design, and in the US it is known as a design patent. Both may be used to protect the three-dimension appearance of an article and/or surface decoration. In the EU, UK and the US, protection may be obtained for a whole object or part of the object. For example, if the appearance of part of an object is not important, then that part of the object can effectively be removed from the design for which protection is sought. Both the registered design and the design patent give the owner the right to stop third parties from making, using, selling, offering for sale and importing articles incorporating the same design, or a design that looks substantially the same, as the design shown in the registered design or design patent.

In each jurisdiction, the protection afforded by the registered design and the design patent is determined by the images that are filed; get the images wrong, and your registered design or design patent may be worthless.

While the legal tests in the EU, UK and US are slightly different, in order for your registered design or design patent to be enforceable, the design has to be sufficiently different from earlier designs. In the EU, the UK and the US there is a 12-month grace period in which registered designs and design patent applications may be filed after initial disclosure/publication of the design by the design owner, and in which the initial disclosure will not invalidate the registered design or design patent.

So what’s the difference? Multiple design application in the EU and UK
A key advantage of the EU and UK systems is that you can make a single filing that protects many different designs (a so-called "multiple design application"). Each design in the single filing will typically be defined by a series of images. Each design in the single filing will be accorded its own design registration number, and renewal fees will be due on each design in due course. This is a great way of obtaining registered protection at relatively low cost. Each design will be in force for 5 years, giving the design owner time to determine which of the designs is commercially important. The commercially-important designs can then be renewed, and the less important designs allowed to lapse.

It is not possible in the US to protect multiple designs in one filing; a separate design patent application has to be made for each design. Owners will therefore typically have to decide much earlier which designs are commercially-important in the US.

Search and Examination
Generally speaking, EU and UK registered designs do not undergo a thorough examination process. The EU and UK authorities will ensure that certain formalities are met, but will not perform a search to see if there are any earlier designs that are sufficiently similar to the design of the application to prevent the design from being registered. This is why there are EU and UK registered designs that are not enforceable because they are the same as, or very similar to, earlier designs. This also means that an EU or UK design application may be registered very quickly, in a day or so. Once the design is registered, it is published, which may be undesirable. It is possible to defer publication for up to 30 months in the EU and for up to 12 months in the UK if you want to keep a design secret.

In contrast to the EU and UK, the US authorities perform a search to try to identify designs that are the same as, or similar to, the design which is the subject of the design patent application. If such similar designs are found, then the design owner has to try to amend the design drawings and/or argue that their design is sufficiently different from the earlier design. This adds to the costs of obtaining a design patent in the US, but the owner can be more confident that the design patent is valid and therefore enforceable. In the EU and UK, there is no such examination process, even though the registered design would have to be valid in order for it to be enforced. This lengthy search and examination process in the US means that the design patent will typically not be published for 12 to 18 months, and therefore the design is kept secret for that time.

Design patent applicants also have an obligation to tell the US authorities about earlier designs of which the design patent applicant is aware that are similar to the design which is the subject of the design patent application.

It’s all about the drawings
The US authorities have stricter requirements than the EU or UK authorities about the nature of the drawings or representations that are used. This can add extra cost relating to the preparation of the appropriate drawings. In the EU, a maximum of seven images can be used to define each design (along with up to three extra, non-protected reference images), whereas in the US there is no maximum number of images, so long as the images are needed to define the design.

Term of protection
The EU registered design lasts for up to 25 years from filing, subject to the payment of renewal fees every 5 years, while the US design patent lasts for 15 years from issue or grant, but no renewal fees are payable for the US design patent. This means that while initial costs for obtaining registered design protection in the EU and the UK are small compared to the US, significant costs will be incurred to renew the designs. Once a US design patent has been granted there are no ongoing costs. This means that design owners may have to make an initial decision as to which designs are commercially important in the US, but can wait before making the same decision in the EU and the UK.

Protection of surface decoration in the US
Getting the drawings right is especially important if you want to protect surface decoration in the US. There is an obligation in the US for the design patent application to show the surface decoration applied to an article of manufacture. While it is necessary to show the surface decoration applied to an article of manufacture, it is possible to “disclaim” the shape of that article. Furthermore, the protection conferred by the registered design in the US may be narrower in the US. An EU or UK registered design for surface decoration protects that surface decoration per se, while a US design patent will only protect the surface decoration applied to the article that is in the claim of the design patent.

What protection do you have if you’ve not got a registered design or a design patent?
All is not lost, at least not in the EU and UK. In the EU and UK, there is an unregistered design right that protects your design from intentional copying for three years from the design first being disclosed. There is no corresponding unregistered design right in the US, although certain designs may be protected by copyright and trade dress legislation.

There is also UK unregistered design right that protects aspects of three-dimensional designs from intentional copying for at least 10 years after first disclosure in the UK.

Summary
It is possible to obtain registered protection in the EU, the UK and the US to protect the appearance of a product. The EU and the UK systems allow design owners to obtain protection for a large number of designs at relatively low cost and in a short period of time. A design owner then has 5 years to determine which of the registered designs are commercially important, renewing those designs, and allowing less important designs to lapse. In the US, it is not possible to make one filing protecting lots of designs, and the application process for each design is more onerous and more costly than the EU, so an owner may have to decide earlier as to which designs are commercially important in the US. However, once a design patent is granted in the US, there’s no renewal fees/annuities.

A future article will concentrate on the differences between UK and EU design law and practice. At Abel & Imray we are experienced in obtaining registered design protection in the EU and the UK.