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Friday, 22 August 2003

FUNCTIONAL DESIGNS GUIDANCE

The Patent Office has issued a new Practice Notice on the registrability of functional designs. The Office is keen to remind people that it is now possible to protect designs with no aesthetic quality. While it is not possible to register designs that are dictated solely by technical function, according to the Patent Office, the s.1C(1) functionality exception in narrower for designs than it is for trade marks. In reaching this conclusion, they cite AG Ruiz-Jarabo Colomer in Case C-299/99 Philips v Remington, which is a little odd because the ECJ didn’t follow the part of his opinion that highlighted the differences between the 2 types of IP rights. However, this is understandable in view of the dearth of case law in what is still a very new area. According to the practice notice, the test of whether the external features of a design are solely dictated by function (and hence excluded from registration) is: “whether or not the technical function dictated the appearance of a product to the extent that there is no (or neglible) design freedom.”

The Practice Notice also considers Section 1C(2), likening it to the old “must fit” exception. Here the test is whether “there is any part of the design which is not required to be of the appearance it is, in order to enable it to fit the end product.” If the answer is no, the whole design is unregistrable. If only some parts of the design are dictated by the need to fit together with something else then only those parts are exclude from protection and the other features of the design may be protected as long as they satisfy the other requirements for registration. Finally, the Patent Office notes that modular systems may now be protected under s.1C(3).

IPKat Riddle: AG Ruiz-Jarabo Colomer in Philips v Remington says that “the feature concerned must not only be necessary but essential in order to achieve a particular technical result.” There is a small prize on offer for anyone who can explain the difference between the terms “necessary” and “essential” to the IPKat.

Find out what’s essential here, here, here and here





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