Do not underestimate the value of design protection

Through past experiences I have found that, when developing a new product, clients are often aware that, in order to prevent others from copying their product, they need to acquire patent protection. Many of them, however, have not even heard about registered design protection which, in some cases, may provide them with an even stronger enforceable right to prevent potential competitors from manufacturing, using, selling or importing a similar product. The aim of this article is to provide more insight into the differences between registered design protection and patent protection.

Scope of protection

Generally speaking, a patent protects the technical features of an invention, ie. the functionality or how it works. A registered design, on the other hand, protects the appearance of an article. The South African Designs Act makes provision for two types of designs, namely aesthetic designs and functional designs. An aesthetic design can protect any design applied to any article, whether for the pattern, the ornamentation, the shape and/or the configuration thereof, having features which appeal to and are judged solely by the eye. A functional design, on the other hand, can protect any design applied to any article, whether for the pattern, the shape and/or the configuration thereof, having features which are necessitated by the function which the article to which the design is applied is to perform. With registered design protection, the measure of novelty in an article's appearance, will determine its ambit of monopoly. In other words, the scope of protection is dependent on how close the closest prior art is. As a result, the protection afforded by a registered design is usually narrower in scope than that obtained by way of a patent. The term of a patent in South Africa is 20 years, whereas the term for an aesthetic design is 15 years, and for a functional design, 10 years.

Validity requirements

For an invention to be patentable in South Africa, the invention must inter alia have a technical feature which is both new and comprises an inventive step. In order to be new, the invention should not have been disclosed publically anywhere in the world (by the inventor or anyone else) prior to the filing of a patent application thereof. In addition, if an invention was used secretly and on a commercial scale in South Africa prior to filing a patent application, then the invention will no longer be considered new. It is therefore critical that an invention should be kept secret, and not be used on a commercial scale, before a patent application has been filed covering the invention. An invention is considered to comprise an inventive step if it would not have been obvious to a person skilled in the art, having regard to any matter which, immediately before the priority date of the patent application (eg. the filing date of the patent application), formed part of the state of the art.

For registered design protection, the article should have a unique appearance. More specifically, an aesthetic design must be new and original, while a functional design must be new and not commonplace in the art in question. There is no inventiveness requirement for a registered design in South Africa. Hence, although the scope of protection obtained by way of a registered design may be somewhat narrower than that obtained by way of a patent, the protection afforded by way of a design registration may well be stronger in some cases, ie. it may be less vulnerable to attack. Unlike patents, the South African Designs Act allows an author a grace period of six months from the first public disclosure within which a design application can still validly be filed. If a client therefore indicates that his product has been on the market for 2/3 months then, although patent protection in South Africa will no longer be possible, he may still be able to obtain registered design protection, provided the design application is filed within six months of the first public disclosure.

It is also important to bear in mind that patent protection and registered design protection are not mutually exclusive, and that patent and design applications can be filed for the same product (eg. to protect the working and the appearance of the product, respectively).

Costs

Generally speaking, it is less expensive to file a design application than a patent application, since, unlike a patent application, a design application is usually not accompanied by a detailed technical description of the working of the article (ie. patent attorneys usually spend less time preparing a design application than a patent application).

Protection in other countries

When applying for patent protection in most other countries, such as the USA and Australia, the applications are subjected to substantive examination, which leads to additional costs. More specifically, patent office examiners in examining countries conduct searches to ascertain what relevant prior art there is and they then compare the pending patent with the prior art. If the particular examiner is of the opinion that any claim is too broad in light of the prior art, he objects. An examiner may also reject a claim if he is of the opinion that the invention described therein is obvious in light of the cited prior art. If, after examining the application, the examiner rejects any of the claims, the applicant may amend or delete those claims that have been rejected and/or he/she must submit arguments to the examiner in an attempt to persuade him that his objections are unfounded or have been overcome. If and when an applicant is able to satisfy the examiner that all the claims are acceptable and all the examiner's objections have been responded to, then the application will be allowed.

In light of the above, there are three important aspects to bear in mind:

1. further prosecution costs will probably be incurred in order to respond to any objections the examiner may raise against the application;
   
2. it may take several years to obtain a granted patent in a particular country; and
   
3. due to the examination procedure, the filing of a patent application in an examining country is no guarantee that a patent will in fact be granted in that country.
   

Registered design applications, on the other hand, are usually not subjected to the same degree of examination (usually only formal examination takes place), which means that the prosecution is generally much quicker and less expensive, and the likelihood of obtaining design protection is higher.

In conclusion, I believe that inventors should be made aware that patent protection is not always the "be-all and end-all" for protecting their products, and that registered design protection may well, in certain cases, provide them with a cost-effective, enforceable right to protect their products.

Verified by Colin Mackenzie, a partner in the Patent Department at Adams & Adams