Industrial Design Registration Vs Utility Models

We speak with Konstantin Tahtadjiev, who tells us the differences, the process of applying for such protection, and the advantages they both present.

How do you decide if an industrial design registration is needed, or a utility model?

Significant number of inventors or creators consider the term “patenting” to be applicable to all intellectual property objects which they have invented or created, without bearing in mind that “patenting” actually means protection of inventions only. In that respect, protection by utility models, as we call them the “short-term patents”, require that the subject matter in question must be an invention which is a physical entity which has technical character or in other words – involves technical teaching. Moreover, the invention must concern a technical problem and it must have technical features for which protection is sought and which solve the respective problem. On the contrary, the industrial design registration relates to protection of merely the visible outer appearance of a product or part of it determined by the peculiarities of the form, the lines, the depiction, the ornaments, the colour blend or a combination thereof. Hence, both objects can be easily distinguished by experienced IP attorneys. For example, if a device whose structure and shape have merely new aesthetic features without any new and advantageous technical features, then industrial design protection is sought. Otherwise, we go further with patent or utility model protection.

 We can only apply for both IP forms if the device has both new aesthetic features coupled with new and advantageous technical features.

Is it often beneficial for clients to apply for both?

Bulgaria is among the countries which provides protection for inventions by patents and/or utility models and industrial design registrations as well. It is always beneficial to apply for both, but it really depends on the possibilities for each particular case and it must be firstly assessed whether the object in question can apply for both ways of protection. For instance, bearing in mind the above example, we can only apply for both IP forms if the device has both new aesthetic features coupled with new and advantageous technical features.

Are both registrations simple? What complications can arise for either registration?

In practice, both registrations are simple, very fast (takes just a few months) and cost effective which are the features that the majority of our clients seek, being them SMEs or natural entities. Although, both procedures do not involve substantive examination for novelty and inventive step /originality, each procedure has its own pitfalls which can cause serious obstacles for registration. For example, a common mistake with regard to the utility models made by applicants, is the non-disclosure of the inventions in the technical description in a sufficiently clear and complete manner for it to be carried out by a person skilled in the art. A common mistake with regard to the industrial designs concern non-compliance with the image requirements, i.e. providing different views of the same design and each view contains shadows which make the colours look different (black or grey) which usually leads to separating the designs in different applications and paying additional fees for each design respectively.

All forms of intellectual property are intangible assets. The asset is merely a legal right conferred upon the proprietor.

How is a registered utility model a commercial asset for companies?

All forms of intellectual property are intangible assets. The asset is merely a legal right conferred upon the proprietor. The exclusive rights provided by a registered utility model gives its owner the right to prevent or stop others from commercially using the protected invention, thereby reducing uncertainty, risk and competition from free riders and imitators which may be crucial for innovative companies to prosper in a challenging, risky and dynamic business climate. To take the protected invention to market, a company has a range of options: commercializing the protected invention directly; selling the utility model to someone else; licensing the utility model to others; establishing a joint venture or other strategic alliance with others having complementary assets. Bearing in mind that utility model registration is relatively fast, easy and cost-efficient process, some of the key reasons for protecting inventions through utility models include: strong market position and competitive advantage; higher profit or returns on investment; additional income from licensing or assigning the utility model; access to technology through cross-licensing; access to new markets; diminished risks of infringement; enhanced ability to obtain grants and/or raise funds at a reasonable rate of interest; a powerful tool to take actions against imitators and free riders; positive image for your enterprise.

By protecting an industrial design through its registration, the owner obtains the exclusive right to prevent its unauthorized copying or imitation by others.

In this regard, how do industrial design registrations differ?

Similarly to the utility model registration, the industrial design registration also provides exclusive rights to its owner to make, import, sell, hire or offer for sale articles to which the design is applied or in which the design is embodied, but the protection refers only to the ornamental or aesthetic aspects of the product and not to its technology aspects.

By protecting an industrial design through its registration, the owner obtains the exclusive right to prevent its unauthorized copying or imitation by others. This makes business sense as it improves the competitiveness of a business and often brings in additional revenue in one or more of the following ways:

• By registering a design, you are able to prevent it from being copied and imitated by competitors, and thereby strengthen your competitive position.
• Registering a valuable design contributes to obtaining a fair return on investment made in creating and marketing the relevant product, and thereby improves your profits.
• Industrial designs are business assets that can increase the commercial value of a company and its products. The more successful a design, the higher is its value to the company.
• A protected design may also be licensed or sold to others for a fee.
• Registration of industrial designs encourages fair competition and honest trade practices, which, in turn, promote the production of a diverse range of aesthetically attractive products.

Konstantin Tahtadjiev

Partner

KONSTANTIN TAHTADJIEV

WEB: www.ktpatent.com

e-mail: tahtad@ktpatent.com

phone/fax: + 359 2 858 03 45