UKIPO consultation on proposed changes to UK designs law framework

The UK Intellectual Property Office recently undertook a public consultation on modernising UK designs law, seeking to ensure that the UK designs system remains fit for purpose in light of technological developments, changes to other designs systems around the world (especially in the EU), and user requirements.  The results of the consultation are awaited with interest, particularly in relation to the following areas:

1. Expansion to emerging technologies: recent technological advances, such as 3D printing, and virtual products that exist only in the Metaverse, have resulted in a number of uncertainties around how designs utilising such technologies may be protected and enforced under existing design law.  EU designs law has recently been updated to address these issues, and it is hoped that UK design law will be amended in a similar manner, so as to expressly recognise design protection in virtual designs, and to provide clear means of enforcement in relation to CAD files that can be used to manufacture products by means of 3D printing.
2. Filing process: following on from the above, in order to better protect non-traditional designs resulting from technological advances, including animated graphical user interfaces, it will be interesting to see how the UKIPO will amend the registered design filing process to allow applicants to better depict the designs for which protection is required.  In particular, will the UKIPO allow applicants to submit applications using video file formats or CAD file formats, so as to more clearly show the designs applied for?
3. Enhanced examination: the UKIPO has undertaken only minimal substantive examination of design applications for many years, and has not undertaken any prior art searching in respect of new design applications; however, this has led to many designs being invalidly registered despite the existence of clear novelty-destroying prior art.  We have also seen a recent rise in the anti-competitive practice of filing invalid design applications for existing products, that are subsequently used to secure take-down notices on e-commerce platforms, thereby preventing legitimate traders from selling such products on those platforms.

The UKIPO is therefore considering ways to ensure that new design applications are indeed validly registered, so as to prevent such anti-competitive behaviour.  One option is for the UKIPO to have discretion to undertake a prior art search and raise objection to design applications on an ad hoc basis, such as when the UKIPO examiner believes that the application relates to an existing or generic design.  However, this would result in an inconsistent approach to design registration, since not all designs would have been searched. 

The second option proposed by the UKIPO is a two-stage system, whereby design applications would be partially registered without a search, but that a search and full examination would be required before the design owner could enforce the design.  Whilst this could lead to delays in taking action against infringers, it should result in fewer invalid designs being enforced, such as in e-commerce notice and take-down procedures.

4. Observation and opposition: linked to the above proposed changes to examination is the possible introduction of observation and/or opposition proceedings in relation to design applications, similar to the process for registering trade marks. One option is to allow third parties to file opposition against a design application within a set period either before or after registration and publication of that design, thereby allowing for challenges to be raised against any applications that are considered to be invalid or registered incorrectly, and for those challenges to be formally decided by the UKIPO. An alternative option is to introduce a pre-registration observation period, whereby anyone can alert the examiner to concerns about a design that they do not consider suitable for registration, giving the examiner an opportunity to object to that design application.  Both options would provide a mechanism for third parties to take a role in policing the designs register, but would require design owners to monitor third party design applications to identify potentially conflicting designs.
5. Unregistered designs: the current unregistered design right regime in the UK is somewhat complex, comprising various different overlapping rights including copyright, UK unregistered design right and UK supplementary unregistered designs.  The UKIPO is considering how best to simplify the unregistered design right regime, and has suggested consolidation of UK unregistered design rights with supplementary unregistered design rights, harmonising the period of protection granted, and changing the qualification requirements. Such changes may also require consequential changes to the UK’s copyright legislation insofar as works of applied art are concerned, and so that UKIPO has sought views on such changes. It remains to be seen to what extent such changes will be made, particularly given the current uncertainty around the scope of copyright in the UK following a number of EU court decisions taken shortly before the UK left the EU.

The UKIPO consultation may well result in substantive changes being made to both UK designs law and UK designs practice, and the outcome of the consultation will therefore be awaited with interest by both design owners and legal practitioners in the design/copyright field.