New design rules implemented

Following last year's Patent Office consultation on the modernization of the UK system of registration of designs, the government has issued two sets of regulations, one updating the Registered Designs Act 1949, the other providing a substantive re-write of the Registered Designs Rules - the Regulatory Reform (Registered Designs) Order 2006/1974 and the Registered Designs Rules 2006/1975, respectively, came into force on October 1 2006. Both have one objective: to ensure that the national system for registering designs offers a useful and cost effective alternative to the Community design system.

The first Community design was registered in April 2003. Since then, it has been downhill all the way for UK design registrations. According to the Patent Office, the input of UK national applications has decreased by just over 60%. The Community registered design, which provides similar rights to a national registered design except that it covers the whole of the European Union, has a modern and more liberal approach to procedural requirements, in contrast to the Registered Designs Act 1949, leaving the national system a poor second with bureaucratic and overly burdensome rules. Moreover, UK businesses have tended to register and protect fewer designs than some of their competitors in other countries, most notably France and Germany. The Patent Office therefore recognized the need to simplify and modernize the rules and statutory forms that underpin the designs registration system, in order to create a system that is as accessible, cost effective and simple to use as the Community system.

Changes to the 1949 act

Under the old system, some applications were examined for novelty and individual character and some were not. Essentially, the practice was to raise lack-of-novelty objections only where, in the examiner's judgment, a design is self-evidently not new or is lacking in individual character due to an already published or well-known design. This practice is now abolished in order to remove any confusion over whether or not an examiner has compared the design with the prior art. This should make the registration system easier and less costly to use. It will also bring the national system into line with the Community system.

Under the new regime, there are no restrictions on the filing of designs as part of a multiple application. Allowing more than one design to be included in a single application for registration at the same time is an overdue and welcome change that should remove the administrative burden on, and reduce the cost to, those who, by reason of the nature of their business, sometimes need to apply to register a number of new designs at the same time. Where a multiple application results in some of the designs being subject to substantive and/or formalities objections by the examiner, the remaining designs being deemed acceptable to proceed to publication and registration, those that are deemed acceptable will be allowed to proceed without delay. The remaining designs will be dealt with in accordance with the requirements in each and every case, and may themselves proceed at different stages. Once the designs applied for as part of a multiple application reach registration, they will exist on the register in their own right, with no evidence that they reached registration as part of any multiple application. They will be treated separately for the purpose of all post-registration actions.

The prohibition on public inspection of certain registered designs (such as designs for textiles and wallpaper) contained in Sections 22(2) and 22(3) of the act is abolished. Instead, all applicants have the option of delaying publication and registration of their design for up to 12 months. The aim is to enable official publication of the registration to coincide with the product launch and so reduce the risk that the design will be copied before it is marketed by the designer.

Section 8A of the act is amended to make it easier for a proprietor to restore a registration that has been allowed to lapse due to administrative error. Where an applicant for restoration is able to state on the application form that the failure to pay the renewal fee on time was unintentional, then it will not normally have to show, as previously required, that its failure to renew occurred despite it having taken reasonable steps to extend the protection. This applies to any application for restoration made after October 1 2006, regardless of whether the design itself was applied for before or after that date.

Registered Designs Rules 2006

The new Registered Designs Rules 2006 are, as the Patent Office puts it, "written from scratch" and mark a departure from the antiquated language of the 1995 rules which they revoke. The new rules simplify the application procedure and introduce a brand new set of forms designed to be easier and less time consuming to complete. The rules also make provision for the public inspection of documents and impose a requirement on the registrar to publish new designs.

The new forms allow multiple applications to be made in one application. Requirements in the previous rules such as two sets of representations, and text on representations such as page numbering and name of applicant, have been removed to make the completion of applications less bureaucratic and time consuming. Under the new system, the registrar will grant the filing date if the applicant has not yet prepared paper representations of the design and can only file a specimen. When an objection by the registrar is raised on an application for a design, the applicant will have two months (a period which it can apply to extend) to make representations, otherwise the registrar will proceed to make a decision on the case.

In any design application, applicants must consent to the publication and registration of the design or designs. If they do not consent then this will defer publication and registration. They will then have a period of up to 12 months from the date of filing in which to give their consent to publication.

A new rule provides for the public inspection of documents. Subject to certain conditions, documentation relating to registered designs may be inspected. A new rule to request confidentiality of documents has also been introduced. However, this right of inspection only applies in relation to applications for designs filed after October 1 2006.

The registrar's discretion to require security for costs is limited further. The new rules take account of the relevant provisions of international treaties and reflect the equivalent provisions of the Civil Procedure Rules 1998 (Rules 25.12 and 25.13). The registrar will have the power to require security for costs in circumstances where a costs order could theoretically be enforced but there is evidence that a party has not paid other awards of costs against it.

There is a new form for filing a counterstatement and failure to file a counterstatement may result in the registrar treating the registered proprietor as not opposing the registration.

Comment

The sweeping changes heralded by the Patent Office consultation and introduced from October 1 2006 are a pragmatic reaction to the effect that the Community design system has had on the attractiveness of national designs. For example, the Patent Office acknowledged that applicants under the old regime could exploit differences between the Community and UK national registered design systems. The examination procedure for a Community design has never involved examination as to whether the design is new or has individual character. An applicant faced with a lack of novelty type objection raised by an examiner in the UK Designs Registry, which it did not agree with, had the option of effectively circumventing the objection by re-filing the application for registration as a Community design. This was considered to be one of several factors that had eroded the value of the practice of examining designs for novelty. But in the light of the impact that the Community design has had, it is a factor that is likely to have been of primary concern. It is also difficult to argue with the Patent Office's proposals for multiple applications. These have proved popular at Community level with over half of all Community design applications covering more than one design. It is expected that a similar pattern will now emerge in the United Kingdom.

Chris McLeod, Hammonds, London