DPN 3/03: Dividing-out design applications
Published 21 March 2003
© Crown copyright 2003
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This publication is available at https://www.gov.uk/government/publications/designs-practice-notice-303/dpn-303-divide-outs
1. Does ‘design’ only mean surface decoration?
Section 1(2) refers to ‘design’ as the appearance of the whole or a part of a product resulting from features such as lines, contours, colours, shape, texture, materials or ornamentation. So it will probably be a combination of factors which are taken into consideration, unless a partial disclaimer states otherwise. An application showing a decorated plate means that the shape of the article and its surface decoration are claimed as the design features. But if, for example, the applicant enters a partial disclaimer on the representation to say that the design is claimed for the decoration of the product only, then the design would extend to other items incorporating the same or a very similar surface decoration only.
2. How does the examiner decide whether or not to raise a divide-out request?
It will be obvious if more than one product is shown, for example, a bed, a chair and a bedside table. But is more than one design shown, bearing in mind the new meaning of ‘design’ under Section 1(2)?
If the design applied to the products is clearly the same (in general terms, if the products obviously ‘go together;) then we will not object. There would be no point, as protection of the design is not limited to a particular product and so would extend even to products which are not shown - as long as the design is the same.
If, however, the design applied to those products is clearly different (in that they do not obviously ‘go together’) then we will objection.
Any such objection raised by the Examiner can be appealed by the applicant or their agent, with an ex-parte hearing being appointed if necessary to decide the outcome.
3. The Registered Designs Act 1949 (as amended)
Section 1 (1) A design may, subject to the following provisions of this Act, be registered under this Act on the making of an application for registration.
Section 1 (2) In this Act, ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
Section 3B (3) Where -
(a)an application for the registration of a design has disclosed more than one design and has been modified before it has been determined to exclude one or more designs from the application; and
(b) a subsequent application for the registration of a design so excluded has, within such a period (if any) as has been prescribed for such applications, been made by the person who made the earlier application or his successor in title,
the registrar may, for the purposes of deciding whether and to what extent the design is new or has individual character, direct that the subsequent application shall be treated as having been made on which the earlier application was, or is treated as having been, made.
Any enquiries about this notice should be addressed to:
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom