What is a design registration?
A registered design (or ‘design patent’ in the USA) is a form of intellectual property right that provides the owner with a limited term right to exclude others from producing a product with substantially the same visual appearance as the registered design.
A registered design is easier to enforce than copyright. Unlike copyright, there is no requirement to show that the infringer ‘copied’ the design. It is sufficient to show that the infringing product is substantially similar and whether or not the infringer was aware of the registered design or product is irrelevant for determining infringement.
In order to obtain a valid design registration the design must be novel, i.e. the design must be new to the world. This means that for many countries, including New Zealand, you must KEEP THE DESIGN SECRET until you’ve filed an application for a registered design, otherwise the design will no longer be deemed novel. If you need to talk to someone about the design before making an application, make sure they sign a non-disclosure agreement or similar agreement.
Designs only protect the ‘shape and configuration’ and/or ‘pattern and ornamentation’ of an object and not any method of manufacture or functioning of the object.
Any design application must be filed before any public disclosure or commercial use.
The term of a design registration varies by country and ranges from 10-25 years from filing the application. In NZ it is 15 years from the filing date.
Why get a design registration?
Design registrations can add value to a business or may be valuable by themselves.
There are many reasons why designs can be valuable and we’ve outlined a few below.
Designs can be licensed so that the owner receives license fees from another business who may want to produce products incorporating the design.
A design is an asset and can be sold or used in the same way as other assets.
Advertising that your product or service is covered by a design registration can be an effective marketing tool. You can even advertise you have a design pending before its granted.
A design registration enables the owner to sue others who are infringing the design registration and prevent them from continuing to use, make or sell products with the design.
Design registration can be used as part of a MAD (Mutually Assured Destruction) strategy as a deterrent to stop others suing the owner, i.e. if you sue me, I sue you.
Marking your products with a design registration number and advertising that you have registered the design of the product can deter your competitors from trying to copy your product.
Investors looking at a business want to know that the business has protected its Intellectual property.
Government or other organisations offering funding for research and development may make the funding contingent on obtaining a design registration for the end product.
Having design registration conveys that you are innovative and improves your status in the minds of your customers and competitors.
Design registrations are assets that add value to your business and can help improve the sale price of your business should you want to exit.
How to obtain a design registration?
Obtaining an effective design registration is a difficult process and our recommendation is to always consult a patent attorney to get them to do that work for you, whether that’s us or another experienced attorney.
We’ve included some general information on the design registration process below to give you an idea of the important stages of obtaining a design registration .
Design registration requirements?
A design must meet the following requirements for it to be registered and valid.
- Novel – a design must be novel. This means that the design must be new to the world.
- Not solely dictated by its function – the design cannot be purely functional, e.g. internal structure of transistor. If the product can only function with that particular design and there are no possible alternative functioning designs then it is likely to be a purely functional design and not able to be registered.
- Shape and configuration or pattern and ornamentation – the design must relate to the shape of the product or pattern or ornamentation.
If your design appears to meet the requirements listed above then it’s time to prepare the application.
In order to prepare the application you will need to provide clear line drawings of each side, top and bottom and perspective/isometric views. Ideally a 3D model can be provided. The drawings need to show the design and the article/thing that the design is applied to.
You will need to show additional drawings if the design can be shown in different configurations, e.g. opena nd closed states.
You will also need to assess which design features are novel and commercially valuable and then rank them in order of importance. This process will help determine which features shown in the design drawings are shown as critical.
It’s important that you provide your attorney with full and detailed information about the design and product. This includes:
- how to make and use it.
- which features are the most commercially useful.
- which features are novel.
- the optimum form of the design as well as all possible alternatives you envisage are possible for each feature of the design.
The application for the registered design can be made after the drawings have been fully prepared.
Your attorney will need the name, address and nationality details about the creators of the design and the person/company who will own the patent.
The process and timing of events after making an application varies by country but typically involves:
Examination – in many countries designs are not granted automatically and are first examined to check that all the requirements have been met, this includes conducting prior art searching to determine if the design is novel.
Acceptance – once the application no longer faces any objections in the examination phase the intellectual property office will issue a notice accepting the design application.
Registration/Grant – once all requirements are met after acceptance the design will be registered.
Once you have a registered design
Once you have a registered design you can take action against anyone who infringes the design registration, i.e. if they are making, using or selling products with substantially the same visual appearance as the registered design
A registered design does not last forever. The term of a design varies by country but in NZ it is 15 years from filing, subject to payment of renewal fees at 5 and 10 years.