How to apply for registered design protection

Making the application

An application for registered design protection in the UK is made by completing either form DF2A or form DF2B, which can be obtained from the Intellectual Property Office or down loaded from their website.

Form DF2A, which is also known as a “new design application form”, should be used to register a new design. Form DF2B, which is also known as a “surplus design application form”, should be used to register designs which have been included in an earlier application made using form DF2A.

Once form DF2A or form DF2B has been completed it should be sent to the Intellectual Property Office, together with an illustration or illustrations of the design, the application fee and form FS2 (the “fee sheet” which can also be obtained from the Intellectual Property Office or downloaded from their website).

The illustrations should provide an accurate and complete picture of the design to which the application relates.

The application fee varies depending on how many designs the applicant wishes to have registered and whether the applicant wishes for the design(s) to be published straight away or deferred for up to 12 months. Up to date information on the fees payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.

If the applicant wishes for publication of the design to be deferred when it is ready to request publication and registration of the design, it should complete and send to the Intellectual Property Office forms DF2C and FS2 together with the fee payable upon an application for publication. Forms DF2C and FS2 can be obtained from the Intellectual Property Office or down loaded from their website and up to date information on the fees payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.

Before making the application it may be sensible to carry out a search of the United Kingdom Designs Register in order to check whether the design is identical to one which has already been registered in the UK. A search of the United Kingdom Designs Register is made by completing and sending to the Intellectual Property Office form DF21, the search fee and 2 illustrations of the design in question. Form DF21 can be obtained from the Intellectual Property Office or down loaded from their website and up to date information on the fees payable and how payment can be made can be obtained from the Intellectual Property Office or found on their website.

Acknowledgment of the application

Once an application has been made the Intellectual Property Office will acknowledge receipt of the application (normally within 6 days) and confirm the date upon which the application was received.

Examination of the application

The Intellectual Property Office will then “examine” the application and decide whether it is acceptable to register the design.

The examination report

Once the Intellectual Property Office has examined the application it will send the applicant an “examination report”.

The “examination report” will set out any objections the Intellectual Property Office has to the application. If there are relatively straightforward ways of overcoming any objections they will be set out in the examination report.

Dealing with objections

If the Intellectual Property Office objects to the application the applicant will have the opportunity to make representations as to why the application should be granted or to overcome the objections in some other manner. An applicant can make any such representations by telephone or in writing or can request a formal meeting at which the applicant will have the opportunity to make representations.

If the Intellectual Property Office objects to an application it will inform the applicant how long it has to respond to the objections. The period for responding to any objections will be between 2 and 3 months.

If the objections cannot be overcome the application will be refused and the applicant will be provided with reasons for the refusal. At that stage the applicant will have the opportunity to appeal against the decision to the Registered Design Appeal Tribunal.

If an application is refused the design may still have limited protection as a design right or copyright.

Acceptance of the application

Once an application for registered design protection has been accepted the design will be registered in the United Kingdom Designs Register and the Intellectual Property Office will send the applicant a certificate. If the Intellectual Property Office does not object to or question the design, it will be registered within 2 months of receipt by the Intellectual Property Office of the application.

The Intellectual Property Office will also publish the registration in the Registered Designs Journal. Other parties then have 2 months to apply to have the registration “invalidated” (removed from the register).

If another party applies to have the registration invalidated the Intellectual Property office will provide the owner of the registered design with details of that party’s reasons. The owner of the registered design will then have the opportunity to make representations as to why the registration should not be invalidated.

Applying for a design to be registered in countries other than the UK

If an owner of a design wishes to protect the design throughout the European Union it should apply to the Office for Harmonisation in the Internal Market for a “Registered Community Design”.

If an owner of a design wishes to protect the design in some, but not all, of the countries in the European Union or in a country or countries, which are outside of the European Union, it will normally have to make a separate application in each country in which it wishes to obtain protection.

Where an application is made in a country that is party to the International Convention for the Protection of Industrial Property the applicant will be able to claim “priority” from the date of their earliest application relating to the same design in another country that is party to the Convention, provided that the application is made within 6 months of the earlier application.