Part A: Introduction
Includes introduction and purpose of this guide.
Chapter 1 - Introduction
Purpose of the registered designs application and examination practice guide
This document provides guidance on how design applications are examined in respect of national applications filed at the UK Intellectual Property Office (‘IPO’). Its aim is to ensure consistency of approach in respect of decisions made by the Registrar of Designs, and to provide guidance on examination practice and procedures for those seeking to register their designs.
This guide is structured into five main categories
- part A, which provides an introduction and explains the purpose of the document
- part B, which deals with absolute grounds for refusal
- part C, which deals with the formality requirements for submitting a Registered Design application
- part D, which provides information on the Examination Report, post-examination procedures, and routes to appeal
- part E, which deals with the Locarno classification system
Where it is practical to do so, the guide follows the sequence of provisions as set out in the Registered Designs Act 1949 (RDA) and explains how and why those provisions may be applied by Design Examiners in the context of designs examination. The text will also refer to the Registered Design Rules 2006 (or ‘the Rules’).
It should be noted that practices set out in this document should be considered alongside the RDA and associated Rules. The guide should not be viewed in isolation, nor used as a substitute for legal advice.
An overview of examination in respect of substantive requirements
Applications to register designs received at the IPO will be subject to an examination process to ensure they comply with the requirements of the RDA. In UK law, there are four main provisions under which substantive examination is carried out. An application will be refused registration if
the representation(s) submitted does not correspond to the definition of a design (Section 1 RDA)
the design is solely dictated by technical function (Section 1C RDA)
the design is contrary to public policy and/or accepted principles of morality (Section 1D RDA)
the design consists of a protected emblem (Schedule A1 RDA)
Where a design is found to contain elements which are excluded under Section 1D or Schedule A1 and/or where the representation(s) filed fail to meet the legal definition of a design pursuant to Section 1(2), an objection will be raised by the examiner. In the case of Section 1C, an objection will be taken only where the design consists entirely of elements which correspond to criteria set out in that provision (that is where the entirety of the design is dictated by technical function). Failure to overcome objections through the post-examination process documented elsewhere in this guide (see paragraphs 13.06 to 13.09) will result in the application being refused.
Whilst Section 1B of the RDA requires a design to be new and to have individual character, the IPO does not carry out a novelty search as part of the examination process. Nevertheless, any third party can apply to invalidate a design registration if they believe it not to be new or not to have individual character.
The following guidance will discuss each of the aforementioned grounds for objection in more detail and, where appropriate, will refer to the relevant sections of the RDA, the Rules, and any relevant case law.