IP-Fälle und Artikel

UKIPO consults on fee reduction for registered designs

Do you have a design you want to protect in the UK? There are several forms of protection available, but designers may eschew the free security of copyright and unregistered design rights for the more robust protection of official registration. If this is your choice, there are two options: a UK registered design giving a nationwide intellectual property right, or a registered Community design (RCD) giving protection across the European Union.

If you have multiple designs to register, the official fees for an RCD may be less than for UK registration. Combining this with the greater geographical coverage and a slightly faster registration process can make a RCD more attractive.

This may not remain true, however. The UK Government has an ambition to make the UK the best place in Europe to base a business, including innovating and protecting IP. Design is recognised as significant to the UK economy, and the 2011 Hargreaves Review of Intellectual Property highlighted the importance of an adaptable, accessible IP system supportive of the design industry. In response, the UK Intellectual Property Office (UKIPO) developed an online application service for registered designs, launched in September 2015, to run alongside the existing paper-based application process.

Proposed reduction of official fees

As a next step in improving the registered designs service, reductions in official fees for obtaining and maintaining registered designs are proposed. The UKIPO published a "Proposal for changes in Registered Design Fees" to support an open consultation on the matter.

Three motivations for the fee reductions are cited:

  • The online service is less costly to administer than the paper-based service, and it is proper that this saving is passed on to the users. This follows the government's "Managing Public Money" approach to fees, which requires that charges are set to cover costs.
  • Designers report that current fees can be prohibitive so they choose to rely on unregistered design rights instead. These are less beneficial, with a narrower scope of protection and not being covered by the criminal offence of deliberate design copying.
  • The lower fees for an RCD may prompt designers to obtain pan-European protection they neither want nor need, thereby cluttering the design space with rights that block competition and inhibit innovation.

Online applications

The main proposed reduction is in fees for online applications. The current application fee, for both paper and online filings, is particularly costly for applications including multiple designs. While maintained for paper applications, a new lower online application fee more favourable to multiple designs would be introduced. As examples, an online application for one design would be reduced from £60 to £50, for three designs would be halved from £140 to £70, and for 14 designs would be reduced from £580 to just £90. Curiously, the present lower filing fee for applications with a deferred publication request would be scrapped while the fee for subsequently requesting publication is maintained.

Renewal fees are also in line for significant cuts. UK design rights require renewal at five yearly intervals, up to a total of 25 years. Total renewal fees for 25 years of protection could be reduced from £1,100 to £410. The structure of increasing fees, where each renewal costs more than the previous one, is to be retained, for the usual reason common across many IP systems that this discourages rights holders from renewing rights that are no longer of interest.

Small reductions are proposed in various fees applicable post-registration. A notable exception is a suggested increase from £22 to £30 for a certified copy (a paper copy of an application certified as true and typically required to support applications filed abroad for the same design). Apparently the current fee does not cover the cost of this service, and so the increase is in accordance with the "Managing Public Money" approach.

Consultation process

By the time you read this, the brief consultation period (07-29 January 2016) for commenting on the proposed fee changes will have expired, so you cannot respond if you have not already done so. It is difficult to see why any interested party should object to the proposals, and so no doubt we will see the suggested reduced fees, or something similar, come into force in due course.

Useful link

The UK Government proposal for changes in registered design fees consultation: http://dycip.com/designfeepropopsal