By way of follow-up to our January blog post, we can now report that the proposed reduced fees for UK registered design protection have been given the go ahead.  This will mean significant savings for businesses looking for registered design protection in the UK.

In January, the UK government launched a consultation on proposals to lower application and renewal fees for UK registered designs.  It was felt there was a need to review fee levels for the following reasons:

• Fees were last reviewed a decade ago in 2006;

• Current fees reflect the use of a paper-based processing system by the UK Intellectual Property Office (UK IPO). However, the UK IPO is launching a digitised platform for registered designs which will result in reduced processing costs (which can be passed on to designers);

• Designers felt that current application fees were prohibitively expensive and uncompetitive when compared with those for Community Registered Designs. As a result, designers were likely to seek EU-wide design protection rather than a UK registered design, even though such broad protection may not be necessary.

All written responses to the consultation were supportive of the new fee structure proposed.  The UK government says that the UK’s “intellectual property system needs to help existing and new designers and business flourish”.  It hopes that the reduced fees will make it easier for designers, particularly individual designers and small start-ups, to get and maintain the right design protection.

The fee reductions will be substantial.   Filing fees will be based on the number of applications filed; the more applications, the greater the saving.  For example, the fee for filing one design application will be reduced from £60 to £50 (not a great saving).  However, businesses will, for the first time, be able to file up to ten designs for a single fee of £70 (currently £420) and up to 20 designs for a single fee of £90 (currently £820).  Renewal fees will increase every five years of the term of protection but, overall, will also be reduced, with the biggest savings made in the third and final renewal periods.   For example, the renewal fee payable at the end of year 15 will be £110 compared with the current £310 (a 64% reduction).   At year 20, the fee will be £140 instead of the current £450 (a 69% saving).  Overall, the total renewal fees for a full 25 year term will be reduced by 63% from £1,100 to £410.

The new fee structure will allow businesses to protect their designs at a low upfront cost.  In addition, lower renewal fees overall (but which increase every five years during the life of the registered design) will make it more affordable for designers to maintain their registration for the full 25 year term but will also encourage them to think carefully about whether they need to renew their registration or not.  This will encourage the renewal of designs regularly used but discourage the renewal of unused and uneconomical designs, de-cluttering the register and freeing up other businesses to innovate in a similar area.  The reduced fees for multiple online applications will also provide designers with a cost-effective way of registering and protecting numerous designs in the UK.

All businesses looking to obtain UK registered design protection will benefit from these fee changes.  To make the greatest cost savings, businesses are advised to bulk file.  This will open up the opportunity for designers to really maximise their registered design protection by filing multiple applications, each covering notable individual parts of their design, rather than one application for the overall design in its entirety.  This will make it more likely that a designer would succeed in an infringement action concerning a competing product that replicates only certain features of the original design.

One of the lessons to be learned from the recent Supreme Court ruling in the Trunki case is that filing simultaneous multiple applications is key to obtaining the widest possible protection. Registering the design in black and white line drawings will generally provide the best protection for the shape of the design, but will be more vulnerable to cancellation on the basis of the prior art. It is, therefore, important to consider registering the design also in CAD drawings, or even with more visible details such as photographs.  Furthermore, the Supreme Court confirmed that it is permissible to protect certain aspects of the design in a design registration.  Registering the parts that are striking will often prove crucial when it comes to enforcement.  The fee reductions will not only be welcome as a way of saving money, but also because the savings can be used for registering more designs at the same time and, therefore, enhancing protection.