Most countries require a design to be ‘novel’ – this means it must not be publicly disclosed (anywhere in the world) prior to filing an application to register the design at the relevant Patent Office. However, there are some exceptions to this:
- there is a 12 month ‘grace period’ for filing a UK (and a Community design application which covers the whole of the EU) for the applicant’s own disclosures – although it should be noted that a non-confidential disclosure by the applicant may still invalidate a later filed design application in countries which do not have this grace period).
- a foreign application filed within 6 months of your UK (or EU) filing date is effectively back-dated to the UK (or (EU) filing date so disclosures within this 6 month period do not affect the validity of the foreign application. This 6 month period cannot be extended, though!
- if the design is still confidential, it can be filed in other countries after the expiry of the 6 month period referred to above. If there is a possibility that you wish to do this, it is best to request ‘deferred publication’ of the UK (or EU) application so it does not proceed to grant too quickly. The design is published at the point when it is granted, so if you do not request this then there is a risk the UK (or EU) design application will proceed to publication and this publication prevents you from seeking valid protection in other countries. Grant can be very quick (sometimes in just a few weeks), so this needs to be thought about in advance.
- in our experience, the shape and appearance of a product has a tendency to evolve or change in the period leading up to launch of the product. Unless, you are sure the product design is ‘fixed’, it can therefore be best to seek registration only shortly before launch, to avoid the expense of filing a new application each time the shape of the prototype changes.
Thus, design protection can be a quick (and relatively inexpensive) way of protecting the shape and appearance of a product, but care needs to be taken to get the timing right.Provided by Steve Unwin, partner in our Oxford Office.