I have a product that I wish to place on the EU registered design list, as the function and the design are inseparable. I am unsure if I should apply for an EU patent or an EU protected design or both.
As far as I understand, if I seek protection as an EU design then I lose any chance of applying for a patent as it has entered the public domain.
If I protect my product or variations of the design under the EU design, can a patent be applied for and granted as a new and innovation invention by others under the EU patent laws?
Also can you advise as to what protection is given to a design under the EU deferred publication rules; in other words, is the same level of protection afforded to a deferred design while I carry out my design improvements as the protection I would receive under a fully EU protected design.
As regards the first part of your query, different intellectual property rights protect different aspects of the same work – more specifically, community designs and patents each have a different scope of protection.
A patent will relate to the innovative and industrially applicable function of a new product, i.e. to its technical aspects. A design, on the other hand, will only protect the outward appearance of your product and not its function.
A consequence of this is that, should your product’s appearance and features be exclusively dictated by its technical function – i.e. if the appearance of your product cannot be separated from its technical function because it solely derives from it – the design will usually not be protectable as such.
You have mentioned that the function and design of your product are inseparable –it is therefore our understanding that the design of your product is solely dictated by your product’s technical function and that therefore it seems unlikely that you would be able to be successful in the registration of an industrial design.
Should your product’s appearance and function have been two separate aspects, both could have been protectable through respectively design and patent. In such a case, as you have pointed out, you would need to be very careful as to the timing of your applications, in case the disclosure of certain aspects linked to the registered design undermines the novelty of certain aspects described in a patent application filed at a later date. Such a risk would depend on the contents of your patent description and patent claims – if your product’s appearance and function are very distinct from each other it is also possible that nothing in your patent application is based on what you have published as a community design – in that case there would be no threat to the novelty of your invention. Such risks would therefore have to be assessed on a case by case basis and we strongly encourage you to discuss this matter with an IP professional, such as a patent attorney, before taking any concrete step.
Finally, you were enquiring as to the deferred publication of community designs. Following registration, publication can indeed be postponed for a maximum of 30 months, which allows you to keep your product confidential during that time. This does not change anything as to the level of protection afforded to such designs, as such protection arises upon registration. However, such a request can be useful in certain circumstances, for instance if you need more time to prepare the launching of your product and want to keep the design secret in the meantime. Please note that you would need to pay the fees for the publication of the design at the end of the period of deferral; failure to do so would otherwise make you lose your design right.