Summary of Key messages:
– Brexit hot off the press: “The UK will introduce a new unregistered design right to cover the types of designs that will lose protection”… “same scope, duration and requirements as the Unregistered Community Design right”. Relief for some, in particular fashion designers, who currently rely on the 3 year UCD right, however concern for European designers if they do not first market their products in the UK.
– Easy Sanitary Solutions (C-361/15P) reconfirms prior art is not limited to the sector of the product in which the contested design is intended to be incorporated, or to which it is intended to be applied, and there is no knowledge requirement for the informed user.
– ‘Forum Shopping’ is still possible despite EU legislation trying to prevent this – think carefully where best to have your case heard not based just on where is likely to give the most favourable judgment but on where you want that decision to be enforced; enforcing a foreign decision in another country can be very slow with some examples given of up to 10 years.
– US Design Patents are frequently invalidated on ‘indefiniteness‘ so extra caution must be made with choosing the correct drawings for US Design Patent applications. Note that decisions are made before a jury in US design litigation so there is an added level of uncertainty with US Design Patent decisions.
– Hague filings may appear administratively easier and cheaper; however as the drawings must satisfy local requirements of each designated country you may end up settling for less scope of protection to cover as many local requirements as you can.