Should I register a Design, Patent or Patent Design?
Many people have heard of patents, but registered patent designs often don’t get the limelight they deserve. Registered designs are another form of intellectual property which can be used in combination with patents or as standalone registered rights. Patents generally protect technical aspects of how a product or process works. A registered design protects non-technical features of the appearance of a product. Products are any industrial or handicraft items including packaging, graphic symbols, and typefaces. Used in combination with patents, the scope of protection for your invention can be leveled-up to cover how it looks as well as how it works.
Alternatively, your product may be more aesthetically designed than functionally designed and more suited to registered design protection in the first instance. It may also be that your product works the same as something else but looks different. Applying for a registered design is generally much less expensive than applying for a patent and much less information is required to obtain a registered design.
For a patent application, you will need to file a description of how the invention works, with one or more claims and a set of drawings to help explain the description and claims. As this is a legal document with serious consequences if it is done wrong, it’s best to get this drafted by a professional. According to the UK Patent Office, 1 in 20 applications filed without the help of an IP professional successfully reach grant. Often, poorly drafted patent applications lead to refusal and a loss of your patent rights or in best case, very limited scope of protection. This is why good patent drafting demands a relatively high cost.
Comparatively, for a registered design application, all you need to file is a representation of your design. You can file up to 12 different protected views per design in a UK application (7 in an EU). While some minor adjustments may need to be made by an IP professional to give you the best scope of protection, the cost is usually much lower than filing a patent application. Further, instead of the years, it takes to get a granted patent, it takes weeks to register and become enforceable. Another bonus of a registered design is that you get up to 25 years of protection compared with the 20 years maximum you get from a patent provided you pay the renewal fees due every five years. This could prove vital for your business if a competitor appears just after your patent has expired.
A great case study of using a combination of patents and designs to protect a product is the saga of Apple v. Samsung. Dubbed the “smartphone patent wars”, Apple’s designs (called design patents in the US) were at the heart of the saga in the US alongside their patents (called utility patents in the US) covering the design of the home button, rounded corners and tapered edges of the casings as well as on-screen icons alongside the technical software features.
If you are interested in what can be protected by a design registration, some examples can be found on the EU Intellectual Property Office website at https://euipo.europa.eu/ohimportal/en/design-definition.
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