Pre-filing Analysis

In order to get the most out of registered design protection, it is important to carefully consider strategy at the pre-filing stage. The protection afforded by a registered design is governed by the way in which a product is depicted in the application, with changes after filing generally not being permitted. To ensure strong and worthwhile registered design protection is obtained for a product, it is crucial that the product is analysed to identify those aspects or features that are of greatest value to the product. This must include an understanding of what is capable of design protection so as to provide strong and enforceable rights. Our attorneys are able to provide such an analysis together with a comprehensive strategy for protecting the design, with representations carefully chosen so that strong protection is realised.

This analysis can also be informed by a comparison with other similar designs already in existence.  In such cases, we are able to conduct pre-filing searches, which may help identify the distinctiveness of a product or features of a product within its field. We also offer on-going watch services to keep you informed of the registered design filing activities of your competitors. This can give you an important insight, and potentially advance warning, of commercial competition in the market.

Once it has been determined which aspects of a product should form part of the design application, the key to obtaining strong registered design protection is to ensure that the right combination of representations is chosen for depicting your product. The EU system provides for a maximum of seven representations in relation to each design, which means careful selection of the representations can be required to obtain effective protection. The UK system, on the other hand, has no such limitation and can be more suited to protecting, for example, products with alternate configurations or movable parts. However, for both systems, it is not always necessary to use seven or more views and in some circumstances it may be preferable to include only one or two.

The UK and EU registered design systems each have built-in flexibility in terms of the nature of the representations that can be used to embody the design. For example line drawings, computer generated images and indeed photographs are all acceptable. Nevertheless the particular choices made by design owners in how their products are represented within the design filings has influenced how the designs are interpreted by the courts in terms of infringement and validity. By understanding the limitations that various aspects of the representations will place on your registered design protection, we are able to offer comprehensive advice that will allow you to maximise the value obtained from your registered design applications.

For more information on how GJE can help you start along the path to registered design protection, please contact any member of our designs team. View our designs team here by filtering by service.

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