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Registered design protection – changes October 2016

As you’ll know, good practice towards the end of a design project is to consider applying for registered design protection. What you may not be aware of is that this has now become easier and cheaper thanks to reductions in official fees, as well as becoming more advisable in light of the Brexit vote.

An advantage of a registered design application is that it establishes an incontrovertible filing date and
that the granted right has a presumption of validity and a presumption that it is correctly owned by the named applicant entity. This all makes a granted registered design a better starting point for assertion against competitors compared with having to rely on un-registered intellectual property (IP) rights (unregistered design right, copyright) which have their uses but which can be fiddly and uncertain when it comes to being enforced.

The fly in the ointment

The fly in the ointment with registered IP rights has always been the time that they take to obtain, and the cost. In recent years it has been possible to be granted a national UK registered design application and/or an EU registered design application granted very quickly, in weeks or even days, if they are in good order when filed, with the option of deferring publication of the designs for a controllable period of many months.

Cost, in terms of the official fees, has always been lower for a UK application than for an EU application, and the cost in the UK has just become even lower from 1 October 2016.

Reduction in fees

The UK Intellectual Property Office (UKIPO) has reduced the official fees significantly for applications filed electronically using its online filing option. For a UK registered design application containing multiple separate designs, the official fees could be as low as £70 (for three designs), £90 (for fourteen designs) and £170 (for sixty designs) – which remarkably is under £3 per registered design. All this with nothing further to pay to the UKIPO until five years after the filing date, when the first official renewal fee needs to be paid. And the renewal fees have themselves been reduced from 1 October 2016, so the benefits continue to stack up.

This all suggests that the cost to benefit ratio for obtaining registered design protection in the UK is now heavily in favour of generously filing to protect a large number of designs embodied in a project as it nears completion, with those designs being traditional 3D products (or significant parts of the products), or surface ornamentation, or logos or webpages or the like.

Preparing and filing applications

With an interested and competent member of staff, a design agency could prepare up and file the UK registered design application in-house. For greater legal polish, a professional IP advisor could be used, which would increase the cost but would ensure that the designs are more considered and present a structured and layered collection of registered designs providing protection in depth.

With the Brexit vote, it is expected that there will be an upsurge of interest in filing national UK registered design applications, compared with filing EU applications, in order to ensure that, whatever the outcome of the legal restructuring resulting from Brexit, protection will still have been obtained here in the UK.

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