Design right

Design right protects the appearance of your product, or a part or detail of it. In principle, the product can be almost any object, and even graphic symbols such as logos and icons can in some cases also be protected as designs. Design right only extends to the industrial design of the product, so it cannot be used to protect e.g. the technical features of the product or their implementation.

Exclusive rights for protecting industrial designs

When you register a design, you can secure the exclusive rights to it, and can forbid others from using it. In this context, ‘use’ is defined as, for example, manufacturing, selling, importing or exporting a product of the same design.

Individual character is key to design right registration

Your design needs to have an individual character in order to qualify for registration. There is no rule or formula to define the individuality of a design, and what is most important is the overall impression of the design. A design is not individual if it differs from previously known designs only in minor details.

Your design must be the end result of creative intellectual work. Banal, overly simple or ordinary shapes cannot be registered as designs. On the other hand, there is no requirement for the design to be artistic.

The design must be new

If you want to register your design, it needs to be not only individual but also new. A design is considered to be new if no similar design has been disclosed prior to the filing date of the design right application.

As a result of the requirement for novelty, it makes sense to apply for design right registration only when the design of the product is final, and you know that you intend to sell and market the product in exactly the form in which it is presented in your application. If needed, several versions of your design can also be registered. If your design is not yet final, or if there are other reasons that you don’t wish to lose your novelty by making the design public, it is possible to request secrecy for the application. In this case, the design will only be made public upon registration of your application, or if it is e.g. continued at international patent offices.

Grace period as an exception to novelty requirement

A grace period means that the owner of the design can make the product public, and apply for design protection for a limited period even after disclosure. Usually, the grace period is 12 months from design disclosure, but the period varies between countries and can also be shorter. It should be noted that in some countries, the requirement for novelty is unconditional, and there is no provision for a grace period in the application procedure. In these countries, disclosing a design before filing an application will preclude registration.

The grace period also involves other risks. The definition of disclosure may be subject to interpretation or debate, and other parties may copy the design before the design right application has been submitted. Consequently, we recommend filing for design right protection before making the design public, whenever this is possible.

Design right validity period

Design right is a time-limited intellectual property right. In Finland and the European Union, a registered design right is valid for five years. After this, the right can be renewed at five-year intervals for a maximum of 25 years, after which the design right will expire permanently. However, there is some variation in the validity and renewal periods of design rights; for example, in some countries the right may only be valid for a maximum of 15 years. In some countries, design rights are not kept in force by renewals, but by fees similar to patent annuities.

Protection for unregistered designs (EU)

Was your design already made public, did you miss the grace period, or forget to file the application? In the EU, the so-called unregistered community design is also recognized. In order to be protectable under this provision, your design must have been first disclosed in the EU area, and it must have been new and individual at the time.

The scope of protection for unregistered community designs is narrower than for registered designs, and only provides protection from direct copying. The three-year protection period is also shorter than that of registered design rights.

It is also more difficult to make claims based on an unregistered design, since disputes often involve evidentiary problems as well as difficulties in defining the duration and scope of protection. In practice, it only makes sense to rely on an unregistered community design if there is no longer any possibility of registering the design.

The 1-2-3 of design right registration

Phase 1: Preliminary examination and defining the design to be protected

In order to be registered, a design must be

new and
individual

The novelty and individual character of the design should be evaluated quickly before filing the application for registration.

A design right application is based on pictures or illustrations. Before filing the application, you need to prepare the appropriate visual materials (as well as written descriptions in some countries), ensuring that the design is presented from a sufficient number of angles.

We recommend using the services of a patent attorney in the drafting and prosecution phase, thus ensuring a high-quality application from the very beginning. If needed, you can request secrecy from the patent office for your design right application.

While your design is still new, you should also plan the scope of geographic protection that you need, along with possible follow-up applications. Follow-up applications can be filed during the six-month priority period, as well as possibly later if a grace period is in effect.

Phase 2: Application and obstacles

The application process for design rights varies from office to office. As a rule, all offices will examine the formal aspects of the application as well as the individual character of the design, with some also evaluating its novelty. For example, the Finnish Patent and Registration Office examines the formalities of the application and the novelty of the design to a limited extent, but the European Union Intellectual Property Office (EUIPO) only examines the formalities, and does not consider novelty at all. As a result, the application process at the EUIPO is often very fast.

If your application contains aspects that require further clarification, the patent office will issue an office action, to which you need to respond by supplementing or correcting the required parts of the application. For design rights, the images that are used to define the scope of protection are a common source of office actions, especially for international applications. The reasons for this are firstly the requirement for novelty, and secondly the varying criteria that different offices have for their application images and the presentation of the design.

Once responses have been submitted to any office actions, and your application has been accepted, or is ready to be accepted, it will usually proceed to registration. At some offices, the application may be advertised for oppositions. During the opposition period, prior rights holders can file oppositions against the registration of the design. The Finnish Patent and Registration Office has an opposition procedure, but the EUIPO does not. For EUIPO design rights, the only way for other rights holders to challenge the registration is by filing an annulment suit after the registration.

Phase 3: Registration and renewals

Once any office actions and oppositions have been processed and your design has been accepted, it will be registered.

A design right is a time-limited intellectual property right. In Finland and the EU, a design right is valid for five years, after which it can be renewed every five years up to a maximum of four renewals. The maximum registration time is thus 25 years, but depending on the office and country, it may also be shorter. Our renewal service ensures that the appropriate fees are paid on time and that your design right remains in force.

A registered design grants you exclusive rights to the design, as well as the right to forbid others from using it. However, even after registration, your exclusive right is not an automatic one, so you must actively ensure that your design right is not violated.