Terminology
There can be some confusion between design rights and patents.
Such confusion is perhaps to be expected as some territories, such as the US, provide registered design protection by a “design patent”, with a technical innovation being protectable by a “utility patent”. This contrasts with the situation in the UK, where we either have a “patent” or a “registered design”, as well as unregistered design rights.
Irrespective of the naming convention used, design rights and patents may generally be distinguished as follows:
- design rights relate to the appearance of a product
- patents relate to technical innovations
Some territories (such as the UK) also provide automatic unregistered rights for designs. However, registering a design offers a stronger form of protection as compared with unregistered rights. Patents are exclusively registered IP rights – there is no automatic or unregistered patent protection.
The Boundary Between Designs and Patents
What about cases where the appearance of a product is closely related to its technical function?
For example, a mesh filter that has a very specific filter shape and size to filter out unwanted materials, or a mechanical connector with a specific shape to enable coupling with a complementary component.
In such examples, the boundary between technical function (the domain of patents) and appearance (the domain of design rights) may get blurry.
This point is addressed by specific exclusions in UK design law, relating to designs dictated by their technical function. Specifically, the following is excluded from design protection:
- features of a product that are dictated solely by the product’s technical function[1]
- features of a product that must be reproduced in their exact form and dimensions to permit the product to be mechanically connected to, or placed in, around or against, another product to perform a function (often called the “must fit” exemption)[2]
It is also worth bearing in mind that different IP rights can co-exist. A given product may well be protected with both a patent and a registered design.
Conclusions
At Scintilla we can advise on exclusions relating to design rights and we can offer feedback on how your product is likely to be assessed in relation to these exclusions. We can also comment on the suitability of your product for design protection and patent protection.
Patents and design rights are both valuable forms of IP protection, which can be useful in covering different aspects of the same product. Rather than relying on a single IP right there is value in building a diverse IP portfolio encompassing multiple IP rights.
The process of registering a design is typically simpler and cheaper than the process of acquiring a granted patent, meaning that design registrations can usually offer a cost-effective way to expand an IP portfolio.
[1] Registered Designs Act 1949, s. 1C(1).
[2] Registered Designs Act 1949, s.1C(2). It is worth noting that Registered Designs Act s.1C(3) permits registration of a design that allows the assembly of mutually interchangeable products within a modular system, with LEGO bricks being the commonly cited example.
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!