The Mushroombiz Guide to IP - Part 2
In Part 1 of our guide to IP, we looked at Confidential and Proprietary information, Copyright, Trademarks and Passing Off. These are types of what is colloquially known as soft IP - that is: intellectual property that is not a patent (aka hard IP). Design rights also fall into the umbrella category of soft IP.
In this Part 2, we take a look at Design Rights, as well as looking at how patents can be used to protect new and innovative physical products (inventions).
Design rights are a type of intellectual property that protect the visual appearance of designs. They can be used to protect everything from industrial designs (such as the design of a car or a phone), to product packaging, to logos and branding.
Design rights relate to the the look of your product, rather than the technicalities of how it is constructed or used. This includes:
- Appearance - shape, colours, texture, materials, ornamentation
- Physical shape
- Configuration - the way the parts of a 3-dimensional object are arranged
- In the UK, there are two kinds of design rights.
In the UK, there are two kinds of design rights.
Unregistered design rights
Unregistered design rights (UDR) arise automatically when you create a new design. There is no need to apply for them, and they last for a maximum of 15 years from the end of the calendar year that a design is first made public.
UDR infringement happens if someone else copies your design or uses it without your permission. This also includes importing, possessing, selling, and hiring (or offering to sell or hire) the design in question.
To be protected by unregistered design rights, your design must be new (not previously disclosed to the public), and you must be able to evidence when it was created.
During the final 5 years of UDR, the owner of the design is obligated, where requested, to grant a licence to any third party wishing to use that design. The UK IPO (Intellectual Property Office) will settle the licence terms if the parties don't agree.
Designs made public in the EU are also automatically protected as an Unregistered Community Design (UCD) - but for a period of 3 years from that date.
It's important to be able to prove that you were the creator of a design, and when. It's worth making sure you have documentary evidence of this, in the form of a design document or similar.
Registered design rights
You can also choose to apply for registered design rights in order to protect your designs more robustly and for longer. You must do this intentionally - they are not automatic as with unregistered design rights, and you will have to pay a fee.
A key benefit of registering your design is that you can renew the initial 5-year registration for a total of up to 25 years.
You will also have exclusive rights to your registered design - no-one else can use it without your permission. As with unregistered design rights, registered designs must be new (not previously disclosed to the public), and you must be able to evidence when it was created.
Registered designs are protected in any country that is a member of the Hague System, which includes most EU countries and many other non-EU nations around the world (but not including Australia or Canada).
Patents are a type of intellectual property that grant inventors exclusive rights to their inventions for a limited period of time. In order to be patentable, an invention must meet three criteria: it must be new, inventive and something that can be made or used.
The process of obtaining a patent is complex and can take years. In order to file a patent application, you need to have a clear idea of what the invention is, what it does and how it works. The application must be filed in each country/territory where protection is required. This can get expensive very quickly if you're looking to protect your intellectual property globally.
Patent rights are territorial, so a patent granted by one country's (or regional) patent office only gives protection in that territory.
A UK patent gives the owner the right to prevent others from making, using, selling or importing the invention for a period of 20 years from the date of filing.
The application time (typically around 5 years) and cost (about £4,000) can put people off applying for a UK patent, and those who do (like any patent) also have to consider the potential legal costs of defending against infringement once the patent is in place. However, there are clear commercial advantages to securing a UK patent if you believe your invention offers you a considerable competitive edge in the UK market.
UK patents last an initial period of 4 years, following which they must be renewed annually up to a maximum of 20 years.
If you patent your invention in the UK, you may be qualified for the Government's Patent Box initiative, which reduces corporation tax on your profits from the patented products/services down to 10%.
Inevitably, a UK patent does not protect your invention outside the UK.
An EU patent offers protection in more than 30 EU countries, and is a good option if you want to cover many bases with a single patent application.
The cost of an EU patent (around €11,000) is more expensive than a UK one, however the coverage is significantly wider and if you are looking to trade with your invention in Europe, it's a valuable tool to have in the box.
The cost of an EU patent application can be kept down by filing a PCT application (see below) first.
While there is no such thing as a single international patent, 155 countries worldwide are signed up to the Patent Co-operation Treaty (PCT). The PCT effectively allows applicants to submit a single filing, which is used to determine eligibility to apply for a patent in any of the "contracting states". Once concluded, the applicant can seek approval from each respective national or regional authority, who will decide whether to grant the patent in their territory.
In order to qualify for the Patent Co-operation Treaty, your invention must first be registered with your national or regional patent office (e.g. UKIPO).
The cost of a PCT application (in the region of £2,500) is significantly cheaper than an EU patent, though often you'll need to file national applications in each country once this period has expired if you want full protection worldwide.