Functional Designs Guidance

The Patent Office has issued a novel Practice Notice on the registrability of functional designs. The Office is bully to remind people that it is straightaway possible to protect designs alongside no aesthetic quality. While it is non possible to register designs that are dictated entirely past times technical function, according to the Patent Office, the s.1C(1) functionality exception inward narrower for designs than it is for merchandise marks. In reaching this conclusion, they advert AG Ruiz-Jarabo Colomer inward Case C-299/99 Philips v Remington, which is a lilliputian strange because the ECJ didn’t follow the share of his take in that highlighted the differences betwixt the two types of IP rights. However, this is understandable inward take in of the dearth of representative constabulary inward what is yet a real novel area. According to the exercise notice, the examination of whether the external features of a pattern are entirely dictated past times business office (and thence excluded from registration) is: “whether or non the technical business office dictated the appearance of a production to the extent that in that place is no (or neglible) pattern freedom.”

The Practice Notice besides considers Section 1C(2), likening it to the one-time “must fit” exception. Here the examination is whether “there is whatever share of the pattern which is non required to survive of the appearance it is, inward companionship to enable it to agree the destination product.” If the respond is no, the whole pattern is unregistrable. If simply closed to parts of the pattern are dictated past times the ask to agree together alongside something else in addition to so simply those parts are exclude from protection in addition to the other features of the pattern may survive protected equally long equally they satisfy the other requirements for registration. Finally, the Patent Office notes that modular systems may straightaway survive protected nether s.1C(3).

IPKat Riddle: AG Ruiz-Jarabo Colomer inward Philips v Remington says that “the characteristic concerned must non simply survive necessary but essential inward companionship to accomplish a item technical result.” There is a pocket-size prize on offering for anyone who tin move explicate the departure betwixt the damage “necessary” in addition to “essential” to the IPKat.

Find out what’s essential here, here, here in addition to here