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Considering the IPO’s consultation on designs framework and its impacts

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Beverley Potts

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Robert Dickens

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14 March 2022

The IPO has launched a consultation on how to improve the designs framework to encourage creativity, innovation and give the UK a competitive edge.

Original stories

IPO calls for views on reviewing designs framework, LNB News 26/01/2022 35

The IPO has launched a consultation on how to improve the designs framework to encourage creativity, innovation and give the UK a competitive edge. The IPO acknowledges how vital an effective IP system is to innovation within the UK and as such, seeks views on whether the current designs framework is too complex and its adaptability to new technologies. The IPO is also interested in how to improve the user experience, increase the value of IP rights and the wider accessibility to design protection. The IPO welcomes evidence-based responses where possible. The deadline for response is 11.45 pm on 25 March 2022.

IPO seeks views on UK design system, LNB News 10/01/2022 54

The IPO has called on designers to share their views on the design system and how designs should be protected in the future. The survey closes on 7 February 2022 and its outcomes will enable the government to consider whether changes to the UK designs system are necessary.

Why has the IPO called for views on opportunities to improve the designs system in the UK?

The underlying motivation for the IPO's design law consultation is the UK Innovation Strategy. This is the UK government's strategy to make the UK a 'global hub for innovation' by 2035. The strategy recognises design as 'core to successful innovation' and highlights its significant contribution to the UK economy. For further information, see: LNB News 23/07/2021 47.

The trigger for the consultation is Brexit. The UK is no longer subject to EU law and no longer needs to harmonise its design law with the EU. This provides an opportunity to ensure the UK's legal framework supports the UK design industry.

What issues are covered in the call for views?

Checking for novelty and individual character

In the UK, designs must be new and have individual character to be protected. Since 2006, the IPO has not assessed whether designs are new and have individual character at the point of application. Instead, designs are entered onto the register regardless and their validity can be later challenged by third parties.

The IPO has suggested that it could introduce a check on novelty and individual character upon application. With the help of an artificial intelligence (AI) system, examiners would

determine whether this requirement is fulfilled before allowing a design to register. The IPO also asks for views on a similar system that would show how likely an application is to succeed.

Alternatively, the IPO suggests a two-tier system. At the first stage, all designs would register without examination, as today. However, a full search for novelty and individual character would be required before enforcing a registered design right.

The IPO requests comment on the above and other options for adapting examination practice in the UK.

Simplifying design protection

Following Brexit, a product may be protected by eight different overlapping forms of registered and unregistered design protection and/or copyright. Different rights protect different aspects of a product. For example, the 10- or 15-year UK unregistered design right protects internal or external 3D shapes but not surface decoration, whereas a registered design protects any aspect of appearance of a product. This is good for designers because they can choose what to enforce but it is also difficult for them to know with any certainty that a new product does not infringe.

In addition, different protections each have different qualification requirements, durations, exceptions, and limitations. For example, ‘original works of artistic craftsmanship’ are entitled to protection for the life of the designer plus 70 years. By contrast, the maximum duration of a registered design is 25 years. The IPO seeks views on whether the current system needs simplifying (eg by reducing the number of unregistered design rights or, at least, removing any unhelpful distinctions between them).

To achieve greater clarity, the IPO has also asked for suggestions on how to define certain terms in the Registered Designs Act 1949, such as ‘get-up’, which can be protected by a design.

The IPO is also seeking views on disclosure-based rights. Following Brexit, a product is now only protected by an unregistered design right in the territory in which it is first disclosed, ie the UK or the EU. There are therefore questions as to how a designer can obtain protection in both territories. The IPO suggests that simultaneous disclosure via live streaming may solve the problem. However, there are concerns about live-streamed disclosures across the world giving rise to UK design protection.

Future proofing for new technologies

The IPO seeks views on whether the current framework encourages the use of AI. For example, the IPO asks whether the current system strikes the correct balance of protection between human-created designs and computer-generated designs.

4D products are printed 3D shapes which can transform into other shapes. The IPO notes that most 4D products could be protectable as a transformable design but asks if some may be excluded from design protection.

Currently, the IPO only accepts 2D representations of designs or physical specimens. The IPO asks whether applicants should be able to submit digital files making it easier to protect dynamic designs and enabling designs to be seen in virtual 3D. It also asks whether the ability to file physical specimens is still useful.

Regulation of designs

The IPO queries a possible change in the deferment period. At present, an applicant may defer publication for up to a year. The IPO asks if 30 months would be better (to align with other Hague Convention countries), or whether there are advantages to reducing the

deferment period. It also asks for broader views on how well deferment works and what information should be published in respect of a deferred design.

The IPO notes that the cost of enforcing rights is one barrier to enforcement. The IPO asks about other barriers and asks how enforcement can be made easier. The government’s current position is that there is insufficient evidence to support the introduction of criminal penalties for unregistered design infringement. However, it is open to hearing views on this in any case.

Is the consultation likely to result in significant changes to the UK designs regime?

Judges, academics, designers and practitioners have long complained about the complexity of UK design law. However, there is little agreement on which parts of the system should be changed or dropped in order to bring about that simplicity. Brexit has provided an opportunity for the UK to make significant changes to its design framework, but whether there is enough consensus for such change to result from this consultation is unclear.

Is divergence from the EU designs regime likely?

Given there is now no need to harmonise UK design law with 27 other EU Member States, it seems natural that some changes will occur over time to customise the design law framework for the UK’s specific wants and needs.

The IPO awaits the outcome of the EU's consultation into its design law later in 2022 (see: LNB News 05/05/2021 28). The EU is also considering changes to its registration process, eg to allow the submission of electronic files to support dynamic designs. Therefore, we may end up with similar changes happening in both jurisdictions, which will make it easier for all concerned.

The article was first published on LexisNexis on 10 February 2022.