The UK Government has launched a consultation today (7 January 2016) to reduce filing and renewal fees for national UK registered designs significantly. This could result in huge savings for designers, and encourage them to consider filing multiple designs for different parts of the same product, thereby increasing the chances of catching a competitor which has launched a product that only selects certain features of the original.
The consultation is a response to the increasing tendency for designers to file Community Registered designs rather than national UK ones. The application fees were already low, making the newly proposed fees (which are a fraction of the existing fees) an absolute bargain. The new fees will only apply to applications made online, and it is the first time that they have been reviewed since 2006. The proposed fees are summarised below.
Overall, these changes are great news for designers who wish to have stronger protection in the UK. The new fee regime will allow designers to consider whether any particular parts of the article they have designed should be registered as a separate design. If this is done carefully to ensure the right is still valid, this could give registered designs a potent new force.
As those who have heard me speak about designs recently will know, despite their effectiveness as a pre-litigation enforcement tool, registered designs often fare less well than unregistered designs at trial. This is partly due to the fact that the claimant is able to carve up its product into a series of unregistered designs prior to issue of proceedings, whereas registered designs have to be taken as a whole. If the IP owner is able to carve the product up into multiple notable features cheaply, as the new system will offer, this is something every designer - big or small - should consider.
The downside of this new approach is that it may well flood the register with invalid designs (as they are not substantively examined before grant), so potential defendants may well look even more critically at the rights being asserted.
Summary of the application fees proposed if filed online
Summary of the renewal fees proposed
Some other fees are changing too, including the fee for applying for a declaration of invalidity at the registry. The fees to apply for deferred publication will not be changing.
The consultation can be found here and submissions must be made by 29 January 2016.