Design Basics

What can be Registered as a Design

A design is defined by the OHIM (Office for Harmonization in the Internal Market) the trade marks and designs registration Office of the European Union, as “The outward appearance of a product or part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation”. It may be 2-dimensional or 3-dimensional.

Benefits of a Registered Design

A design patent has two major benefits:

1. It proves that you were in possession of the design at the filing date.
2. It permits you to prohibit any third party to make use of your design.

After filing of an application for registration of a design no third party can steal your design. This permits you to present your design to possible partners, investors, licensees or component suppliers. Briefly speaking an application for registration of a design is essential before starting business with your design.

Before Filing a Design Application

In contrast to a patent application it is not necessary to keep your design secret. You may even use your design to test the acceptance of the market for up to 12 months. There is a grace period of 12 months in which you may use your design befor filing a design application. However it is strongly recommended to file a design application before presenting the design to any third party, because designs are often copied. If a non filed design is copied by a third party, e.g. by one of your suppliers, it is difficult to prove that the design is your own intellectual property.

A good design should be distinctive over the competitors designs in your field.

First identify the markets geographically in which you want to use your design. Do you plan to expand to further markets? What is the time scale?
This information is important for defining the filing strategy. Based on this information we can help you to find a cost optimized solution for your needs.

Preparing a Design Application

As a basis for preparing a design application a search for older designs should be conducted. First this helps to make sure that your design does not infringe earlier designs. This knowledge is important to avoid time consuming and expensive litigation procedures.

After this search the application has to be prepared. To clearly describe the design colour photographs or other pictures are required. These should show the design from all relevant views and they should also show relevant modifications of the design.

First Filing of a Design Application

There are several options for the first filing of a design application:

1.  DE filing with the GPTO

• Cheapest option
• Examination or registration report within 3 to 10 months
• Only German language
• A German Design may be registered

2.  EU filing with the OAMI

• More expensive than DE filing
• Examination report or registration between 3 and 8 months
• Languages: English, French, German
• A European Design (Community Design) may be registered

Later Filings

Latest within six months after the first filing you may initiate either

1.  National Filings

• National filing at national patent/trademark offices in most statest of the world; or

2.  EU Filing

• EU filing at the OAMI which can result in a registered Community Design mark.

3.  International filing with the WIPO

• National Registration which can be extended to most states of the world.

Claiming the priority of the first filing allows the later filings to receive the filing date of the first filing.

Examination and Registration

In most states design applications are formally examined by the Patent Office. There an examiner reviews the design application and checks whether it meets the national formal requirements. Sometimes an adaption to specific national requirements is necessary. Then the examiner issues an examination report. If the examiner finds any formal defects you may amend the design application. Again the examiner will review the amended application and the arguments. These steps may repeat several times according to the national law. Then finally a design is registered or in very rare cases the design application is rejected.

Making Use of Your Design

A registered design permits you to prohibit any third person to make use of your design. Your competitor’s designs must distinguish significantly over your design.

Often two competitors use similar designs without knowing about each other. A registered design can help you in proving that you have the earlier rights.

Munich – location of the Patent Offices

The European Patent Office and the German Patent and Trademark Office are headquartered in Munich. For this reason we have our Office in Munich. more…

The description above shows the typical options and is based on our experience. It is no legal advice.