Register your designs

, warns Bill Lally of patent attorneys Forrester Ketley & Co. He examines the latest moves to harmonise intellectual property across Europe and asks whether engineering designers are missing a trick. Engineering designers now enjoy a wider protection for their designs, thanks to a 1998 European Council directive to amend UK Registered Design law, which came into effect at the end of last year. The amendments bring significant changes and offer protection to a wider range of innovative designs, whether they create a novel aesthetic effect or are primarily functional. So what are these changes and what do they mean for engineering design professionals? The first major change is that a design can be protected, irrespective of the article that bears it. Under the old regulations, it was necessary to register an article to which the design had been applied but the new system does away with this requirement. Similarly, it was difficult to protect an article where only part had been redesigned. Now a design for new handle can be protected, whether it is applied to a window handle, a door handle, or even a structural member. Similarly, a casing would be protected whatever it contained. Secondly, under the new regulations, visible individual component parts of complex products may be protected in their own right, (subject to certain restrictions relating to bona fide restoration of complex products). For example, visible car body parts such as doors or dashboard trim may be protected independently of the car on which they are placed – this even protects the design as far as other models of car are concerned. Thirdly, a requirement that has presented a challenge to engineering designers in the past is that designs that were not aesthetic were not registerable, no matter how great their functional merit. The amendments to the Act now mean that it is that it is no longer necessary for a design to appeal to the eye. For engineering designers, this means that primarily functional designs, such as aluminium extrusions or injection mouldings, may now be protected. The next change offers an extra layer of protection for designers - under the new UK regime, protection is no longer limited to industrially produced items. A vast range of previously unregistrable designs, including unique, primarily 'artistic' creations such as paintings, sculptures and graphic and computer-designed images may now be protected. One of the earliest registrations under the new regulations is for a proposed field sculpture that currently exists only in the abstract, as a computer-generated design. For engineering designers, this means that CAD models are registerable in their own right and designs can be protected at an earlier stage of the process. However, the new rules bring new requirements. The test for novelty has been broadened so that prior disclosure anywhere in the world will prevent registration unless the applicant can show that the disclosure is too obscure to have been known to any designer in the relevant field. Engineering designers may now exhibit and market their product during a 12-month 'grace period' before applying for design registration, but would be advised to use this with caution. Specifically, registration could be prevented if the same or a similar design is shown in the meantime, which is not based on what the designer has disclosed. In addition to novelty, designs now have to meet an entirely new level of 'individual character', which makes registration harder to obtain but infringement actions more potent. A novel design must be distinctive to be registered and it will fail if it is so similar to another item that it produces in the informed user a feeling of 'deja-vu'. Together, these changes to UK design law give new opportunities for engineering designers to safeguard their creations, to benefit from licensing and to take action against copying. These changes are just the beginning of the good news; designs now enjoy Community-wide legal protection thanks to EU regulations. A Europe-wide unregistered right (UDR) which came into force on March 6 this year, confers automatic protection against copying for three years to designs that meet the same criteria as registerable designs. Furthermore, once the machinery for a harmonised design registration system is in place, a single registration will give protection throughout the European Union for up to 25 years. There will be one renewal fee every five years, and one forum for litigation. However, should an application or litigation fail, it fails throughout the EU. The Office for Harmonisation of the Internal Market (OHIM) in Spain is currently looking to run this registration system alongside the EU trademark system it administers. The office is expected to be in a position to start receiving applications in January 2003, for processing to begin in April. Additionally, OHIM will allow a single registration to protect a number of related designs such as variants on a theme, which would further reduce the cost of European protection. In practice, UK designers may fall back on the UK’s UDR system, which gives 10-year protection to 'original' designs, including functional items and internal configurations. UK UDR has no requirement for distinctive character and there is currently no plan to scrap this right. These changes are particularly important for UK industry as manufacturers in the Far East frequently copy designs. While it will still be difficult to prevent this from happening, shutting off the lucrative European market from such infringements is an immediate disincentive for copying in the first place. In conclusion, the amendments to the Registered Designs Act and European-wide harmonisation offer wider and more potent protection for engineering designers at every stage of the design process. It is now up to British industry to ensure it takes advantage of this protection and safeguards the intellectual capital at the foundation of the engineering sector. Help protect your company's IP and log your design processes and registrations. Check out the Innovation Logbook