Copyright provides strong route to protection

Tom Shelley interviews a leading expert on legal copyright, in order to establish what protection it gives industrial designs, and how new EU systems can best be made use of

Designers of new products, perhaps afraid to become involved in the complexities and expense of patenting, should seriously consider using copyright as a means of protecting their intellectual property, both that which is visually obvious and that which is less so. As Bruce Alexander, managing partner of Boult Wade Tennant recently told Eureka, "Copyright is not a substitute for patenting." However, we gather that copyright protection is a lot cheaper, very broad in what it covers, and thanks to new European legislation, has just provided a new "Unregistered design right" in the EU. Patenting protects an idea, whatever form it takes, but in industrial design, form is often more important than function, and form can be protected by copyright. "If a copied product looks very similar, the copier would have to prove that they arrived at the design independently", explained Alexander. "Even if the copy is different in small details, it still infringes copyright if it appears to be derived from somebody else's work. For example, a copied lamp made from two pieces of plastic in the form of an oval tube is an infringement of the original idea even if the copy is a slightly different shape and colour." The copier then has to show they arrived at their design independently, and that there was no link between their design and the original. Copyright in industrial designs comes in two forms: an Unregistered Design Right, which costs nothing, and gives exclusivity for five years in the UK, and a Registered Design Right which lasts an initial five years, but can then be renewed for further five year periods up to a maximum of 25 years. "In the UK, enforcing copyright has always been fairly straightforward, relying on our common law heritage based on 'passing off' and similar concepts. But in Roman Law countries, it is more difficult to enforce, except that we now have a European Community wide agreement as of April 1st this year." This includes a Community Unregistered Design Right which lasts three years and a Community Registered Design Right. The Registration system and challenges to Community Registered Designs should be a simpler and lower cost system than in the past. "The whole aim of the new system is to avoid the need for cross examination and court appearances," Alexander declared. It is instead a paper-based system, with a central arbitrating office in Alicante in Spain. Parties have no right to a hearing if the adjudicators decide they have enough evidence, which they usually do. The corresponding patent office is in Munich where European Patents may be challenged ion the nine months after grant. "It is certainly a cheaper process than going through the UK high court but is inevitably more complex and expensive than with a design or trade mark because of the nature of the beast." Even then, adjudication apparently, "Hardly ever takes more than a day." In order to establish an Unregistered Design Right, it is necessary to keep proper records about who did what and when. Some choose to post themselves their drawings and keep the sealed envelope, using the post mark to establish the date. "You can do this if you wish", Alexander laughed, but a more conventional approach would be to keep a log book (like the one available from Eureka!) and get one's line manager or some other responsible person to countersign and date entries. If the intellectual property is in the form of CAD files, these need to be printed out and countersigned and dated, since computer file dates can quite easily be falsified. Registering the design right is better and not expensive. Even leading firms such as Boult Wade Tenant, established in the heart of London's legal district, only charge around £500 for a Community Design. "And says Alexander, you can put more than one design in the same application, on which case we only charge £150 for each additional application." Drawings have to be in specific formats to show what the design looks like, with isometric or perspective views, and everything needs to be done on the "Proper forms." It may be desirable to protect the shape of a product and any decoration that defines its visual appearance, separately. Although the registration process in the EU is simple and low cost, enforcement of unregistered or registered design right might still require litigation in national courts, which can be complex and expensive. The situation varies dramatically from country to country in Europe but "forum shopping" can help keep costs down. Interestingly, Alexander considers that enforcement in other countries is getting easier. Despite the suggestion that Far Eastern countries consider Copyright gives them the right to copy, most countries now have patent, registered design and trademark laws as well as criminal laws to combat counterfeiting. In many countries, it is easier to get the authorities interested in pursuing a criminal investigation than it is to sue in a civil court. In China, punishments for counterfeiting are up to and including the death penalty. Civil suits, on the other hand, often lead to the company being pursued disappearing and re-forming itself. Most countries are apparently now making a real effort to clean up their images and become respectable, and the last round of the GATT talks devoted a lot of time to TRIPS, or Trade Related Intellectual Property Systems. China is seen by Boult Wade Tennant as a massive source of IP protection business in the next ten years or so. With so much subcontracting in China, it is very necessary to protect intellectual property there and Alexander notes that his clients often put China next on the list of countries where protection should be obtained after the US and Europe. And like Japan in the recent past, China is likely to soon make the transition from stealing other people's intellectual property to being concerned to protect its own. Like all good lawyers, Alexander dispenses what sounds like pretty good advice. "Our object is to keep our clients out of court rather than get them in it. The main goal of applying for patents and registering designs should be to have a fund of intellectual property that can be traded or licensed, or to otherwise establish a stronger negotiating position. It may be best to keep an idea secret to begin with, but nothing stays secret for long. Among our services, we can advise on how to set up confidentiality agreements to allow the testing and evaluation of prototypes." Boult Wade Tennant Email Boult Wade Tennant Pointers * Unregistered design rights last for three years in the UK or five years in Europe. To establish them, it is only necessary to keep proper records of when things were done and who by * Registered design rights last for five years, renewable in periods of five years for up to 25 years. Registering designs is much cheaper than applying for patents * New European procedures, set up on 1st April 2003, aim to make the whole process of registration and protection much less expensive than hitherto