How Best to Protect a New Product
You have just spent a lot of money developing a new product. You have the final prototype back from the factory. You are convinced that it will do really well in the market. So how do you cost effectively prevent your competitors from copying your new product and free riding on all that investment?
Patents – Broad Protection but can be Expensive and Won’t be Granted Quickly
Patents offer broad protection for products containing certain types of new inventions, because what is protected by a patent is, in essence, a high level description of the key features of the invention. If a feature of the claimed invention is “element A connected to element B by suitable connecting means” then a wide range of different “connecting means” (bolts, welding, screws, glue, etc.) may all fall within the scope of the patent. The appearance of the connecting means is generally irrelevant. This means that two items, which both fall within the scope of a patent, can look very different. This is a very significant difference to other IP rights[1] which protect products, which are on the market: such rights only protect against competing products that have at least some visually similar elements to the protected product. Patents also have the advantage of potentially lasting quite a long time – up to twenty years from the filing date of the application, leading to the patent.
However these material advantages of patents are often outweighed by the cost and delay in getting them.
For a fairly straight forward mechanical invention, to obtain a patent just in the UK is likely to cost between about £5,000[2]. To obtain a patent, via the European Patent Convention, and then validate it in the UK, France, Germany and Italy will typically cost about £9,000. These are average figures: actual figures can vary very considerably but they nonetheless give an idea of the typical costs involved.
To be added to these costs are annual renewal fees which for a UK patent are between £70 to £620 per year. To be added to the renewal fees charged by the UKIPO are the fees of the professionals who handle the renewals, which can easily double the annual costs.
For inventions protected in multiple jurisdictions, all these costs can soon become very large.
Then there is the delay. To obtain a patent in the UK will typically take three to four years. For patents granted via the European Patent Convention, it will typically take about 2 – 4 years. In the UK, it is not possible to commence patent infringement proceedings until the patent has been granted, which can allow a competitor to build a strong market position (and corresponding war chest) before any infringement action can be commenced.
Unregistered Rights in the New Product
Some products – for example wallpaper, fabrics and some garments – will be protected by copyright automatically on their creation, but many three dimensional utilitarian manufactured items won’t attract such protection, at least in the UK. To protect the design of three dimensional, utilitarian, manufactured items in the UK, the creator of the new product will have to rely on either UK unregistered design right or supplementary unregistered design right. The good thing about such rights is that they subsist automatically on creation of the thing embodying them: there are no registration formalities.
The downsides of such rights include:-
(a) There are a number of important exclusions as to what can be protected: for example UK unregistered design right does not protect surface decoration so that for example surface features of the door of a kitchen cabinet won’t attract protection. Supplementary unregistered design right does not protect features of the design of an item that can’t be seen during ordinary use so that for example the design of the inside of a torch or the internal workings of a lock are unlikely to be protected by supplementary unregistered design right.
(b) Secondly, for both rights it is necessary to establish that the infringer copied the claimant’s work, which can create some uncertainty when it comes to enforcement.
(c) Thirdly, such rights don’t last very long: you get the remainder of the calendar year during which marketing of the new product first took place plus ten further calendar years for UK unregistered design right and just three years from the date of first marketing for supplementary unregistered design right.
The Gold in Them There Hills
What is clearly required is a right that is cheap and quick to obtain, does not require copying to establish infringement and lasts a long time.
What if I told you that there was an IP right:-
(a) which you can obtain almost immediately
(b) which is very cheap to obtain
(c) which can be validly obtained, even if you have already launched your product on the market
(d) for which you can establish infringement even without proof of copying
(e) which lasts for up to 25 years.
Sounds too be good to be true?
Welcome to the world of registered designs. Below we set out some of the main features of UK & EU registered designs as well as some issues to think about relating to them.
How Quickly Can You Get a Registered Design
In the UK, in a typical week, if you file an application for a registered design on a Monday morning it will be granted and you can sue on it on by the middle of the following week. EU registered designs take about the same length of time. Registered designs are very quick to get as neither the UKIPO nor the EUIPO carry out any novelty searching.
How Much Does it Cost to Get a Registered Design
The costs of registering designs in the UK, using Sonder & Clay, are set out in the table below. It can be seen that ten designs can be registered for just over £770.
Do’s and Don’ts of Registration
This is where you have to be careful.
A few key tips are these:-
(i) Generally it is not a good idea to register photographs of your product as that will limit you to the colours of the item depicted in the photograph and there can be problems with shading in many photographs, making the interpretation of the image uncertain. Also photographs will often include elements that you will want to exclude – for example an EU three pin plug or product safety/regulatory markings.
(ii) Avoid using CAD grayscale images, which have added contrast shading to differentiate different facets of the design, as such shading can be taken to limit the ambit of the monopoly to items with similarly contrasting colours. Line drawings are best.
(iii) Don’t include text, logos or brands on images that you register as their inclusion is likely to greatly reduce the scope of protection to items containing such text, logos and brands or something very similar to them. This is another reason why registering photographs is not a good idea as photographs will contain such elements.
(iv) File multiple designs to keep your options open when pursuing infringers. In the UK you can file up to twelve images per design and in the EU up to seven. If all those images depict, for example the whole of a chair, but from different angles, then that whole chair will be compared to the whole of the infringing item when determining infringement. This greatly narrows the scope of protection: if the seat of the competitor’s chair is identical but the back of its chair is different then the competitor may avoid infringement. Better to file one registered design for the chair seat and a separate registered design for the back of the chair: each can then be separately asserted against competitors who only reproduce parts of the protected chair in their own chairs.
Can You Test The Market First And Then Register?
A big advantage of registered designs relative to patents is that the creator can try them out on the market first before spending money on protecting them by registration. With patents a single non-confidential public disclosure, made before the first patent for an invention is filed, can be relied upon by a third party to invalidate the patent. With registered designs the creator’s own prior publications of identical or very similar designs in the twelve month period leading up to the filing of the application for registration are ignored when considering the novelty of the design[3].
Furthermore if a competitor copies the creator’s product on the market to produce their own me-too product within the same twelve month period then that competitor’s product is also ignored when considering the novelty of the subsequently filed registered design[4].
However given the low cost of filing a registered design, the “test the market first strategy” should be approached with some caution. It may, for example, prove difficult or impossible to show that a competitor’s me-too product, launched before the creator’s application for registration was filed, was in fact copied from the creator’s own earlier marketed product: an outcome which would leave the creator’s registered design at risk of invalidation.
How Long do Registered Designs Last?
Registered designs are initially granted for a five year period and can be renewed for up to four successive five year periods, making a total of up to twenty five years in total.
What Sonder & Clay can do for you?
Sonder & Clay’s specialist IP team can both file your registered designs (often on the same day as you instruct us) and then help you with any infringements of them. We can help you put together the optimum registered design strategy to support your business. Please get in touch to book a consultation.
[1] For example copyrights, UK unregistered design rights and supplementary unregistered design right.
[2] These figures include both professional fees and official fees from the UKIPO but don’t include VAT on the professional fees and assuming 15 claims or less and no excess pages fees.
[3] Registered Designs Act 1949, section 1B(6)(c).
[4] Registered Designs Act 1949, section 1B(6)(d).
