Succeeding by Design: Government considers changes to UK designs system

The UKIPO has published its response to its Call for Views on the UK’s designs system. Although the UKIPO has provided no firm policy proposals or concrete conclusions on the questions raised, the consultation and related responses cover a number of points of interest. In this post, we focus on the technology-related aspects of the consultation and responses. 

Background 

Design rights essentially protect the appearance of products. However, they are regarded by many as overly complex due to the overlapping forms of protection available.

As parts of the UK’s design right system are based on EU law, Brexit has given the UK more flexibility over its own regime. In that context, and as part of the Government’s ‘UK Innovation Strategy’, earlier this year the UK Intellectual Property Office (UKIPO) launched a call for views on the UK designs system.

Last week the UKIPO published its response to views submitted and to the results of a survey conducted in parallel. The consultation and responses covered three broad areas, referred to as ‘new opportunities’, ‘future technologies’ and ‘better regulation’.  Although at this stage the UKIPO did not offer any firm policy proposals, a number of themes emerge which are of interest. 

Results and Government Response

1. New Opportunities

This encompassed a mix of potential reforms to the UK’s design system, and the direction of travel is generally to be welcomed: key themes included how to adapt the UK’s laws to meet the needs of the 21st century and making the system more user-friendly for businesses. These will be of interest to all, but particularly smaller and early-stage businesses.

Simplifying the designs system

The overarching view was that the current design framework is overly complex and should be simplified, particularly with respect to the current patchwork of unregistered design rights and the relationship between design and copyright law. The UKIPO will consider ways to simplify the system (including moving to a single unregistered design right), provide better guidance and make enforcement easier.

Registered designs – search and examination

The UKIPO asked for views on whether mandatory search and examination should be introduced pre-registration. Responses were mixed: while such a process may increase certainty of validity, it could also result in delays and increased costs. However, many respondents suggested that using a high-quality AI tool could overcome some of those issues.

There was also discussion of introducing a more sophisticated tool for searching the designs register – assisting applicants in carrying out pre-application searches.

2. Future Technologies

Recognising the need to future-proof the design system and ensure it is appropriately positioned to deal with the rapid pace of technological development, the UKIPO sought views on a broad range of topics relating to the digital environment and future technologies. A selection is summarised below.

• AI-devised designs. The majority of responses thought AI should not be recognised as the owner or author of a design. This is consistent with responses to the UKIPO’s 2021 call for views on AI and IP with respect to AI-devised inventions and patents (see our post here) and is also aligned with the UK Court of Appeal’s decision last year in the DABUS/Thaler patent case.
• Computer-generated designs. The call for views looked at various aspects of computer-generated designs, including whether the position for authorship should be harmonised across all forms of design right. The general view was that existing provisions are adequate, although some respondents called for equivalent provisions to apply to supplementary unregistered design (created when the UK left the EU, offering equivalent UK protection to that which was previously available for unregistered Community designs).
• Digital representations. The UKIPO currently only accepts 2D representations of a design in an application. Respondents generally called for the UKIPO to accept digital representations and to expand the range of allowable file formats, assisting with applications for certain types of design (e.g. GUIs and 4D printed designs).

Designs in a digital environment. Some respondents felt that the current system did not adequately cover the use of designs in a digital environment, such as avatar content in online gaming, virtual fashion products and GUIs for mobile devices. 

 3. Better Regulation 

This theme dealt with two sub-topics, each of which is worth a brief mention.

Deferment 

The UKIPO currently allows a UK registered design applicant to defer publication of their design for up to 12 months. This helps applicants to apply at an early stage for a design whilst maintaining confidentiality. However, issues may arise for third parties in a similar field who are therefore unaware that a filing has been made. Respondents indicated that an express deferment provision is desirable, but there were mixed views about duration and what information should be published about a deferred application. The UKIPO is considering these issues and will consult further with relevant ‘stakeholders’.

Enforcement 

Respondents noted that the UK’s system for enforcing design rights against an infringer can be expensive. The UKIPO stated a range of options would be considered to improve this (such as the Small Claims Track, the introduction of a designs opinion service and ADR/mediation). However, they added that design cases are often complex, and such routes may therefore not always be appropriate.

What’s next?

It is clear from the UKIPO’s response that this call for views is just the first step in a longer process. Ultimately, this is a bit of a watching brief, as no concrete proposals were referred to in the UKIPO’s response. However, the UKIPO has indicated its intention to consider many of these issues further and seek additional input at future consultations. We await the next steps with interest.