Statutory guidance

Designs Practice Notice (DPN) 02/22: Application forms, deferring publication, and time periods for replying to objections

Published 2 November 2022

Designs Practice Notice (DPN) 02/2022: Application forms, deferring publication, and time periods for replying to objections

1. What?

This DPN is to inform customers applying for UK registered designs about the application forms to use, the process for deferring publication of a design, and the time periods for overcoming any objections raised during examination. This DPN replaces the guidance in DPN 05/06.

2. Why?

Feedback has shown that there is some confusion about the applicable law and practice in this area. This DPN aims to provide clarity on these issues.

3. Forms for filing UK registered designs

You can register a design online by filing a Form DF2A. This can be used to file single or multiple designs in a single application. The paper form is also available at Application to register one or more designs.

If a single application consisting of multiple designs is modified to exclude one (or more) of the designs (for example, on the basis that insufficient fees were paid to cover them all), a subsequent divisional application may be made for the excluded design(s), which may then be given the original filing date. The form for a subsequent application is Form DF2B which can be found under the heading Application to register designs divided from an earlier application. There is currently no online version of this form.

4. Raising objections and time periods for response

If an examiner considers that there are grounds to refuse an application (for example, because the design is dictated by technical function, is contrary to public policy or morality, or does not meet the statutory definition of what a design may constitute), a statement of objection will be issued as part of the examination report. The customer will, in accordance with Rule 8(3) of the Registered Designs Rules 2006, be given two months during which they may submit written observations in response. The customer also has the right to request a hearing. If, after considering any observations and/or any submissions made at a hearing, the examiner or hearing officer decides the application should be refused, a letter refusing the application will be issued which will contain brief written reasons for the refusal. However, for the purpose of an appeal, you may request a full formal written statement of reasons for refusal; such a statement can be requested, free of charge, by filing DF5: Request for a statement of reasons for registrar’s decision within one month of the letter of refusal; this is in accordance with the directions given under section 31A of the Registered Designs Act 1949. A refusal will normally be issued notwithstanding that a customer may have deferred the publication of the application (see below).

Where the examiner does not consider that there are grounds to refuse an application, or where a substantive objection has been overcome, but the representation is objectionable, a direction will be made to provide a suitable representation within a three-month period in accordance with Rules 9(1) and 9(2). This may occur where either a representation of the design has not been provided (due to only a specimen being provided when first filed) or where the representation is not suitable for publication. Failure to comply with that direction will similarly result in refusal of the application. As above, this will occur notwithstanding that a customer may have deferred publication.

In relation to the two/three-month periods referred to above, an extension of time in line with Rule 39(1) may be requested and each request will be considered on a case-by-case basis.

5. Deferring the publication of your design

Newly filed (unobjectionable) designs will be registered as soon as is practically possible. Upon registration, the design will be published in the Designs Journal, and it will form part of the case details on our website case enquiry page. However, there may be circumstances where a customer wishes to defer or delay the registration and publication of their design, for example, in order to further develop or market the product before the design is published. To facilitate this, application forms DF2A and DF2B contain boxes which enable a customer to either:

• consent to publication (upon registration) as per Rule 4(3), or

• to defer publication by up to a maximum of 12 months from the date of filing of the design (a period which is not extendable)

Customers should note that a request for deferment does not remove the need to deal with objections raised or directions made by the examiner, as set out in the guidance at paragraph 4 above; an application will normally be refused even if it is within its deferment period.

6. Bringing deferment to an end

When a customer wishes to bring deferment to an end they will need to formally consent to the publication (and registration) of the design by filing an Application to register a design which registration was deferred. The design will, of course, only be published and registered on condition that any objections raised at examination stage have been overcome. A fee of £40 is applicable for each design on which consent to publish is given. If the form is not filed within 12 months of the filing date of the design, it will be deemed abandoned.

7. Timing

Given that the content of this DPN is merely of a clarificatory nature, as opposed to new practice, it applies immediately.