Portfolio building for design registration

For companies primarily involved with Engineering projects it is likely that the most valuable intellectual property rights will be in the form of patents. Design Registration may be used for products that are seen as having real design quality. Thus, existing technology could be released in new packaging and given a distinctive trade mark.

For some organizations, the products they produce may be essentially designed items with exclusive branding. Thus, some may see Design Registration as being in the hard IP camp of inventions and others may see it in the soft IP camp of marketing and branding.

Again, like patents, portfolio building essential consists of WHAT is protected and WHERE is it protected. The objective can be set out in an IP policy document.

For engineering designs, Design Registration may be seen as a fall-back position for countries where patent protection cannot be justified on economic grounds. Thus, a policy may include seeking patents in the UK and the US while relying on Design Registration in the EU.

For aesthetic designs, much wider protection may be required. In this respect, it should be noted that internationally there is less harmonization compared to patents. If protection is required in the US and China for example, local requirements must be considered when preparing Representations.

Under the supervision of the World Intellectual Property Organisation (WIPO) there is an international system for design registration known as the Hague Agreement. It operates in a similar way to the PCT (for patents) and not the Madrid Protocol (for trade marks). 

An application for international registration will usually claim priority from a first application (filed in the UK for example) within the six-month convention term. Thus, unlike an application under the Madrid protocol, it is not built on an existing registration. Furthermore, new designations cannot be added.

The duration of an international registration if fifteen years – so a separate EU application may be required if twenty-five-year protection is required in Europe. Furthermore, national applications may be required in countries that are not members (of the ever increasing) Hague Union.