Photography: Jens Haas, PhotonicaIn the knowledge economy, business\'s intangible assets are worth more than premises, land or labour. In the last decade the value of the average business\'s intellectual property has increased from being less than 20 per cent to over 72 per cent of its book value. Businesses now recognise that there are positive benefits to owning and protecting their intellectual assets as ownership can mean that intangibles are now commodities, which can be bought, sold and licensed and can generate additional value in a business.
Designs surround us in our everyday life, from the chair we sit on to the clothes we wear. They can be either 2- or 3-dimensional. Most people are aware of trademark, patent and copyright protection but often overlook protecting the aesthetic value or \"eye appeal\" of their work. Yet design rights are not a new method of protecting your intellectual property. They have been around since the industrial revolution.
Currently there are three different types of legal right available to protect designs, namely: artistic copyright, unregistered design right and registered design right. Copyright deals with 2-dimensional articles such as posters and design drawings. It arises automatically by law giving the author of original artistic or literary work ownership in that work and the right to prevent or restrict the copying or distribution of it or parts of it by third parties. Unregistered design rights apply to the original designs of shape or configuration, i.e. 3-dimensional articles. Like copyright, the unregistered design right vests in the creator automatically by law. They subsist for 10 years after the date of first marketing up to a maximum period of 15 years from the date of creation. The problem with both copyright and unregistered design rights, however, is that the onus is on the creator to establish ownership by proving that the original design is his. By comparison, a registered design right not only gives a longer period of protection for 3-dimensional articles (an initial five years extendible in blocks of five up to a maximum of 25 years) but the certificate of registration establishes ownership without further proof and gives a monopoly right in the product. To get registration you simply apply to the Design Registry at the Patent Office (for a fee of £60 per article) and the certificate is usually issued within four months.
The law on designs is contained in the Registered Designs Act 1949 as amended by the Copyright Designs and Patents Act 1988. The 1998 European Designs Directive (intended to standardise design registration across the EU) was implemented in the UK on 9 December 2001 by the Registered Design Regulations 2001. Whilst registration procedures remain substantially unchanged there are predominantly six main changes to the old regime. They are:
Before the regulations if a pattern was applied to a plate and at a later date the same pattern was applied to a mug a separate application would have to be lodged for each item. Under the new regime it is the design itself which is protected irrespective of the product to which it is applied.
Handicraft was not recognised previously - only industrial processes (as at least 50 items had to be made before protection could be sought). Single items are now recognised, which means that a work of art like a sculpture can now be registered as a design, enabling the artist to control licences for merchandising.
Previously an article had to have \"an independent life of its own\". Components were excluded from registration. Now part of a product can be protected. Thus the handle on a mug can be registered and its design protected against a third party applying it to a teapot. Note, however, that for component parts to be registrable they must be ordinarily on view when in use. Hidden or internal components cannot obtain this protection.
Under the old law registration would fail if the design was known anywhere in the UK prior to the date of application. Now the Registry will look at disclosure anywhere in the world. An application will thus fail if there is a shown lack of novelty about the item.
Previously, disclosure would have prevented registration unless it took place at a certified exhibition. There is now a 12-month period of grace for disclosures made by the designer. Within that period designers can exhibit and market their products and, if after that disclosure they realise the product is worth protecting, they can register the design. However, if someone independently comes up with a similar design within the same period then that disclosure may prevent registration.
There is an entirely new test of \"individual character\". Does it differ enough from similar items? This is judged through the eyes of an informed user who is not a design expert, i.e. someone who is familiar with the products in question, such as a waitress judging a cafetiÃ©re. If there is a sense of \"dÃ©jË† vu\" it will fail as being too similar.
Two other points are worth noting about the changes - first, as it refers to \"products\" rather than articles the new rules apply equally to 2- and 3-dimensional items. Consequently, primary literary and artistic material can now be registered, as can packaging, graphic symbols (such as computer icons) and typographical features. Second, utilitarian designs without eye appeal can now be protected.
So what benefits can registration give to businesses, particularly those that rely on innovative products?
The business owns an asset with a monetary value. The Certificate of Registration is accepted by financial institutions as something they may be prepared to lend against. For a comparatively small registration fee businesses acquire an exclusive right which enables them to take action against anyone making, using or selling their designs without permission - protecting them against copying by competitors for up to 25 years.
It can be the first step to international protection. Registration within six months of the UK application. In any one of over 130 countries will be backdated to the date of the UK application. In late 2002 there should also be a single Community Design Right.
The design itself can be synonymous with branding and image - look at Dyson who have used a portfolio of design and patent rights to protect their products.
At the end of the day, if a business invests in the creation of a design it should invest in its protection. It\'s neither as complicated nor as costly as it might first appear.