On first inspection, it might therefore be considered that where patent (or utility model) protection is being sought in respect of a design whose features exhibit a technical benefit, the very fact that this patent protection is pursued might then bring the design into the above technical function exclusion. In practice, however, this is not always the case. This is because the technical function exclusion applies only to UK/EU design registrations whose design features are solely dictated by technical function.

In practice, this exclusion has been found to apply only where it can be shown the technical function of the design features is the only factor which determined the appearance of those features, with the existence of alternative designs not being decisive in that regard.

Therefore, if evidence can be provided which demonstrates that during the initial design process of a given design, the appearance of its design features was at least partially borne out of aesthetic considerations unrelated to the technical functioning of these features, this evidence can be used to rebut any assertion that the technical function exclusion is applicable.

The applicability of such evidence inherently will depend on the scope of the UK/EU design registration pursued. So, in a hypothetical example of a UK/EU design registration exclusively directed to the shape of a set of flutes, used in a drill bit, which are flutes that demonstrate some sort of technical benefit (which might be recited in a corresponding patent application), it may be challenging to argue that this design registration falls outside the remit of the technical function exclusion. That being said, with a variant of this design registration, which is directed to the shape of these flutes, but which also shows the flutes in a particular colour (for example, pink) deemed particularly aesthetically desirable, it can be realised how the addition of this colour to the scope of the UK/EU design registration would allow an argument why the design registration falls outside the technical function exclusion.

This drill bit example, of course, is entirely simplistic. However, it nonetheless demonstrates the fundamental point that where a design is being contemplated for use in a UK/EU design registration, and there is concern about whether the design might fall within the remit of the technical function exclusion, the question that needs answering is whether there exists at least one feature from the design whose appearance is not borne out of functional considerations. If no such argument can be identified contemplation should be given on whether the design registration should be limited with a further feature(s) that then allows for such an argument.

It may be a very subtle argument as to why a feature(s) from a design is borne out of an aesthetic consideration that is unrelated to its function. For example, it could be the presence of any symmetry (or lack of symmetry) in the design, which is determinative for some aesthetic reason. Or perhaps the implementation of a particular dimension, or a particular predefined spacing/separation between features in the design, or some sort of curvature from the design, which the designer(s) can pinpoint as being borne out of an aesthetic consideration from their perspective.

Tying in with such evidence, to the extent that a design feature from a UK/EU design registration is subject to a corresponding patent application, care should be taken to make sure that any technical benefit for this feature, as recited in the patent specification, is expressed in a way that makes it more challenging to use this text adversely in the context of a technical function attack in the UK/EU design registration. For instance, considering the hypothetical example of a UK/EU design registration that is related to the shape of a contoured gripping surface that might have been unexpectedly found to allow a user to much more easily grip the underlying product to which the surface relates, the technical benefit associated with this feature could be expressed in the patent specification in a number of different formats, such as:

1. “The introduction of the contoured gripping surface was found to make it significantly easier for the user to grip the underlying product in use”; or
2. “Whilst initially added as an aesthetic design choice, it was subsequently realised that the introduction of the contoured gripping surface made it significantly easier for the user to grip the underlying product in use”.

The language in both points 1 and 2 make it clear in the patent specification what the technical benefit of the contoured gripping surface is, for use as part of any explanation to a patent examiner. However, it is clear that the language from format 2, assuming it is true, may make it much more challenging for a third party to assert that a UK/EU design registration, exclusively directed to this contoured gripping surface, falls within the technical function exclusion.

It can be seen that it perfectly possible to pursue both patent and UK/EU design registration protection for a design that demonstrates both aesthetic and technical benefits, without the design registrations necessarily falling foul of the technical function exclusion. Though care must be taken to scope the protection of the UK/EU design registration accordingly.

Useful link

• C‑395/16, DOCERAM GmbH v CeramTec Gmb, Court of Justice of the European Union, paragraph 32, 08 March 2018: dycip.com/doceram-v-ceramtec
• Registered Designs Act 1949, UK Government: dycip.com/registered-designs-act-1949
• Council Regulation (EC) No 6/2002 on community designs, EUIPO Design Law, 12 December 2001: dycip.com/euipo-6-2002