Protection file

Intellectual Property Office publishes design protection review findings

The report reveals that the current system can negatively affect small design firms.

The Intellectual Property Office (IPO) has published the government’s responses to a call for advice on the UK designs framework.

The Design Framework or ‘designs systems’, as the IPO also calls it, refers to how the UK currently protects designs. This was reviewed following the UK’s exit from the European Union (EU).

The findings follow a 2-month informal consultation that ran from January to March, during which the government asked for evidence-based answers to questions about the current framework. The survey covered topics such as system complexity, quality of user experience, and value of intellectual property rights.

The call for advice was triggered by the completion of Brexit, as the government said it saw a chance to give the UK a “competitive advantage” with an up-to-date and flexible legal framework. It received 57 responses from designers, design consultants, academics, law firms/agencies and SMEs.

The conclusions and government responses have been divided into several categories.

Saving Drawings

The informal consultation revealed mixed views on the implementation of mandatory recording of search and examination in the design framework. While some thought this might increase the validity of design protection, others were concerned about delays and increased design registration costs.

One suggested solution that the government will consider is an AI tool that could be used by both the IPO and clients performing searches. Analysis of responses clarified that such a tool could increase accessibility for those without professional legal representation while reducing invalid filings.

Other respondents were in favor of a two-tier system such as that proposed by IP Australia. This would involve a novelty search, which is used to determine if an invention is new and original by searching for prior art, before any application. It would be quick and affordable, but some have expressed concerns that it could delay enforcement.

The government has also been invited to consider joining the World Intellectual Property Organization (WIPO) Digital Access System (DAS) for Designs, which could help reduce the administrative burden for applicants filing. in many countries. The report clarifies that this will be considered part of the IPO’s digital transformation agenda.

Simpler design systems

While some respondents favored different types of design protection allowing flexibility, the general view was that they overlapped, making the UK system too complex.

One of the key findings was that independent creators and small businesses that cannot afford to employ legal representatives find it difficult to understand the system. The designs survey showed that almost half of respondents did not know a design could be registered, and three-quarters said they had poor knowledge of unregistered design protection .

There have been many requests for better advice to help creators unfamiliar with intellectual property law. This would help them navigate the system and better protect their products. The government has agreed to consider suggested solutions, which include a single unregistered design system, harmonization of authorship provisions for computer-generated designs, and a review of the overlap between design and copyright regimes. author. This could result in a single piece of legislation.

Although the government wants to differentiate any future IP system from current EU law, some respondents were keen to keep the deal with the EU design regime, as it would benefit businesses operating globally . This is closely linked to another finding of the call for advice: companies operating worldwide must now choose between SUD protection in the UK or Unregistered Community Design (UCD) protection in the EU. .

Harmonization with the EU design regime and WIPO membership could reduce the cost and effort required of designers, so the government has agreed to consider this possibility.

Future technologies

The majority of respondents were of the opinion that AI should not be recognized as the owner or author of a design. Although the general opinion has been that the existing laws that cover computer-generated designs are sufficient, it has been questioned whether they will meet the needs of future technology.

One finding was that the current system may not provide adequate protection against 3D and 4D printing assisted counterfeiting, while another was that the list of file formats allowed by the IPO was not long enough.

The government has shown that it recognizes that new technologies will inevitably impact designers and, in turn, it has agreed to keep these laws under review.

Enforcement

Some respondents indicated that enforcement in the UK is not only costly, but also inefficient as it favors those with significant financial resources. The government has acknowledged that the complexity and cost of legal action has a ripple effect on smaller design firms and says it will look at how this can be simplified for all rights holders.

One suggested solution was to introduce a design advisory service that would provide a form of expert determination without the cost of litigation.

What happens next?

The call for advice was the first step in the process. Now that the results have been released, they will inform a new set of questions, composed by the IPO and the designers who engaged in the process.

Then comes a formal consultation. These are usually followed by proposals.

An IPO spokesperson said: ‘We want to hear from leading industry professionals in the next stage of the process, including Design Week readers and those not engaging. usually not with the government.”

There is no concrete timetable for the next steps, but you can follow the process and stay up to date on the government website.