Protecting a unique design

New Design Magazine - July 2010

What’s the risk of not protecting a unique design? Jackie Maguire explains the importance of Intellectual Property and what it all means

All designers must these days be aware that if they do not take steps to protect their designs, they run the risk of them being stolen. Unfortunately this is not always the case - too many product designers are still either not bothering to protect their designs at all- perhaps thinking they will get round to it at a later date - or do not protect them thoroughly enough when developing a new product.

Graphic designer Mandy Haberman is an example of the importance of protecting Intellectual Property (IP). Mandy designed a leak-proof cup for children that seals
between sips and so prevents spillage - the Anywayup® cup. In 1992, the first of many patents was filed. The patent protected her unique idea that uses a slit valve to control the flow of liquid through the spout of trainer cup. Additional patents both for the UK and overseas were later filed and granted, together with registrations for Trade Marks and Designs.

However, some 18 months after the product was launched, Mandy discovered
that one of the UK companies she had initially approached for licensing was making a very similar product to the Anywayup® cup. She sued the other company and won the legal battle. If Mandy had not taken the right steps to protect her product and then act when a company started to sell a similar product, it is unlikely that she would be the successful and award-winning entrepreneur
that she is today.

Whenever a company creates a Product Development Plan they should make the
effort to plan the registration of its IP rights: not only does this demonstrate the company values its intellectual assets, it may improve the negotiating position if there are earlier third party IP rights in a country. IP rights that are not registered are difficult, if not impossible to protect, although in some countries certain rights are not registrable, for example copyright in the UK.

Intellectual property law is made up of many elements of legal protection and
a design or technology owner will be concerned with any number of them. They
include:
■ Patents
■ Copyright
■ Registered design right
■ Unregistered design right
■ Trademarks
■ Databases
■ Trade Secrets
Identifying and protecting IP is a major consideration for companies who not only
want to ensure that their designs are not stolen, but also that the real value of their
business is recognised when it comes to seeking additional funding or when making plans to sell. Consideration should be given to the different forms of protection available, and also whether what the company itself is doing could infringe the rights of others, thus leaving it open to being sued.

So what are the differences between the different forms of protection, and how can people be sure that the right protection is chosen for a particular business? The range of the main IP choices is discussed in more detail.

Firstly, patents protect the functionality of new, unique inventions or discoveries
- including mechanical processes or devices - on a country-by-country basis through national patent offices, though there are some regional systems for filing such as through the World Intellectual Property Organization (WIPO) or the European Patent Office (EPO).

A patent protects the inventor’s right to its exclusive use, and will give the right to
prevent others from making it, importing, using or selling it unless permission is given to do so. A further advantage to obtaining a patent is that it can allow others to apply for a licence to use the invention which can generate royalties for a business. However, a patent does not protect an idea itself but rather it prevents others from making actual use of the idea.

For an invention to be patented, the patent office will need to establish that it is
really new, and not obvious, that it involves a real invention and that it is capable of industrial application. A more detailed examination is then made to finalise the wording of the claims that define the rights. Once granted, a patent lasts for 20
years, as long as the required annual renewal fees are paid. After 20 years, the invention automatically passes into the public domain. Likewise, if an invention is made available without being patented, it is deemed also to be in the public domain. However, not everything can be patented - for example, a literary, dramatic, musical or artistic work cannot.

Applying for a patent takes time, so it is advised that an invention should be patented immediately. It is important to get the application right first time as any mistakes could inhibit the process later on. However, obtaining a patent is not always the best way to protect a design, and it may be that some of the other forms of protection are more suitable.

Copyright gives an exclusive right to copy and otherwise exploit ‘literary works’ and
‘artistic works’. It can cover a wide range of works, such as, computer software, dramatic and musical works, as well as the artistic aspects of product packaging. In contrast to a patent, it protects the form or expression of a work rather than the idea underlying it. Copyright is automatic and does not require registration. Under UK law, a business would by default own the copyright of work created by its employees. However, under UK law independent contractors not on your payroll by default own copyright in any work they create on your behalf. A person can, however, agree otherwise under contract and have copyright in their work assigned to them if they are willing for this to happen.

In the UK, the length of copyright protection varies according to the type of work. For literary and dramatic works it lasts for 70 years after the death of the creator, while copyright for the typographical arrangement of publications lasts for 25 years. Another form of protection is trade marks. These are words, logos, and
devices - that is, distinctive features which can be represented graphically and can distinguish goods or services of one business from those of another. They can include logos, sounds, colours, gestures, brand names, and slogans. They can even consist of the shape of goods or their packaging. Registration though can be indefinite as long as the renewal fees are paid. Without registration, trade marks can still be protected in circumstances, through an action for ‘passing-
off’ and although this common law, can apply if enough reputation and goodwill have already been established, it is still a good idea to register as this will make it much easier to defend if someone infringes it.

A final area of IP that is useful to the design profession is registered and unregistered design right. By not applying for a registered design, what is created may receive limited protection through unregistered design right or copyright. However, this allows anyone to produce similar articles if they have created them independently. Registering a design gives the creator of the design additional legal protection. A registered design protects the overall visual appearance of a product in the geographical area in which it is registered. In order for it to be registrable, a design must be both new, and have ‘individual character’.

Registration of a logo as a registered design can provide a useful alternative trade mark registration or additional line protection for a logo which is registered as a trade mark. Unregistered design right can offer free automatic protection in the UK for the internal or external shape or configuration of an original design. What is often not recognised however, is that although it protects shapes which serve a functional purpose, it does not protect the two dimensional aspects of a
design such as patterns or decoration. The unregistered design right exists for
up to 15 years from the end of the calendar year where the design was first recorded in a design document or, if a design is made available for sale or hire within five years; 10 years from the end of the calendar year that first occurred. The design may be copied in the last five of those years if the person who wants to reproduce it agrees payment of a fair royalty.

Intellectual Property is a powerful business asset for designers and like other assets it needs to be looked after, protected and applied effectively. Ignoring these issues is like leaving the office unlocked when you leave: an unnecessary risk to any business.

Jackie Maguire is the Chief Executive of Coller IP Management with director level experience in operations, marketing and business development. more >