DPN 1/06: Ending examination on novelty grounds
Published 20 November 2007
© Crown copyright 2007
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This publication is available at https://www.gov.uk/government/publications/designs-practice-notice-106/dpn-106-ending-novelty-examination
1. Background
Before 1 October 2006, all design applications were considered for novelty and individual character by examiners. However, the depth of examination was reliant on the individual knowledge and experience of each examiner, meaning that some designs would receive more detailed attention than others. This change has removed any confusion over whether or not an examiner has compared the design with the prior art, making registration easier and less costly.
2. The new practice
On receipt of a new design application, the examiner considers the case in accordance with any substantive grounds for refusal. These grounds are exactly the same as before but exclude any examination, and therefore any potential refusal, on grounds of novelty or individual character.
3. Requirement of novelty and individual character
Even though an application is no longer tested for novelty by the UK Intellectual Property Office, the laws on novelty and individual character still remain. The onus is therefore placed on the applicant to consider the novelty and individual character of their design before applying to register it. Otherwise the design may subsequently be challenged by a third party who believes that the design is not novel and this may lead to invalidation of the registration.
If an applicant is in doubt about the validity of their design they can ask the UK-IPO to carry out a search of prior registered designs. This may help the applicant to decide if their design is novel.
Section 1B(1) states that, to be registrable, a design must:
- be ‘new’, and
- have ‘individual character’.
4. How is ‘new’ defined?
A design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date. (Section 1B(2)).
5. How is ‘individual character’ defined?
A design has ‘individual character’ if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date. (Section 1B(3)).
6. What is ‘the relevant date’?
The relevant date is the date that the application is made (or is treated as having been made). (Section 1B(7)).
7. Can the design be published prior to the application for registration?
There is a 12 month grace period before the relevant date, during which time the designer can publish his or her design. (Section 1B(6)(c)).
8. What if the design is published in another part of the world?
Registered design protection may be lost if the design is published anywhere in the world, where it could reasonably have come to the attention of someone carrying on business in the European Economic Area. (Section 1B(6)(a)).
9. What if the design is shown to someone else under a confidentiality agreement?
Registered design protection is not lost if the design is disclosed under express or implied conditions of confidentiality. (Section 1B(6)(b)).
10. What if someone else makes the design public after the designer has shown it to them?
Registered design protection is not lost if the design was made public during the period of 12 months immediately preceding the relevant date by someone acting on information provided by the designer, or by abusing trust placed in them by the designer. (Section 1B(6)(d) and (e)).