How are you protecting your designs?

Written by Narda Ben Zvi, Adv., Partner and Head of High tech and IP department at Yaacov Salomon, Lipschutz & Co.

Intellectual property rights are the most important and vital property of any startup as well as mature corporations. Founders and investors are usually familiar with patent and copyright protections, and swiftly become aware of the importance of trademark rights. The fact that legal protection is also granted to trade secrets is also not much of a secret.

One of the lesser known and publicized of intellectual property rights is the right to protection of a Design or as it is known in various countries - Design Patent.

A design right is an intellectual property right that protects the visual aspects of objects that are not purely utilitarian. A design consists of the visual features of shape, configuration, pattern, or ornament, or any combination of these features, applied to a two or three-dimensional form containing a unique and novel aesthetic value. A design can be a two - or three - dimensional pattern used to produce a product, industrial commodity, handicraft and even computer graphics. Nearly any kind of design which meets the requirement of novelty may be eligible for design right protection. Such artifacts stem from variety of industries e.g., fashion industry (accessories and dresses); computer industry (peripheral items such as keyboards, monitors, headphones); motor industry (alloy rimes, external body parts); computer graphics industry (application icons); and the list goes on to cover many items and industries.

These days, the Israeli Legislator is finalizing the Designs' Act, which will bring with it a major reform in design protection in Israel. Some of the more notable changes in the new legislation will be the conveyance of a grace period of 12 months to allow the design owner to publish its design without the peril of losing the novelty requirement for registration (which effectively, will allow the designer to register after first indication from the market); another aspect of the new legislation is the ratification of the Hague treaty for international designation of design registration. In this respect, Israel will enter the Hague club which introduces a registration system between the member states, so that Israeli design owners will be able to comfortably and inexpensively register their design rights in other member states and vice-versa.

Copyright protection for original designs and works of art specifically does not apply to mass manufactured items or otherwise known as Applied Art, and it is such items that the scope of industrial design rights cover.

A well-designed chair is not merely comfortable to sit on, but also appealing to look at. This is true for many products, whose value depends not only on what they do, but also on how they look. Manufacturers and designers invest serious capital and knowhow into their industrial designs and this is why a novel design is considered to be valuable intellectual property.

An industrial design is worth a lot of time and money, and it may prove to be the difference between whether or not you and your company are successful, and whether any success is soon eclipsed by a flood of cheap copies from competitors eager to exploit the popularity of your products. Such copies may directly affect not merely the bottom line of a particular product, but your reputation, as the copies' quality, security and safety measures may be questionable.

Even in the modern age of smart portable devices and mobile applications, industrial design rights are prominent. Simply witness the struggle of Apple to enforce its rights related to the shape, color and visual features of the iPhone and iPad.

As an entrepreneur or a brand manager one should not underestimate the intrinsic value of a popular design, as the marketing results of attractiveness to the eye of most beholders, exceeds that of many advertising campaign. Examples of a few of the most famous designs which became identified with the product brand are the contours of the iPhone/iPad/iPod, Coca Cola’s bottle, and the shape of the Volkswagen Beetle and the Mini Cooper.

As opposed to other intellectual property rights which require registration, such as trademarks and patents, relatively fewer designs are registered for protection, in many cases due to lack of awareness, rapid innovation cycles, the complexity of manufacture, short product lifespan, or even the seasonal nature of certain goods, such as fashion items. The increased use of certain technologies, such as 3D printers, may offer a new scope for registry of industrial designs.

If you are the owner of an original and novel industrial design which has yet to be published, registering the design will grant you the exclusive right to use and benefit from it. A design may be registered for a single item, or a set of items with similar complementary properties, which are designed to be used together, or are usually marketed together, such as a set of utensils. The term of protection in Israel is for a maximum of fifteen years, divided into a trio of five year periods, with renewal fees (it is notable that this term is subject to changes in the new Designs' Act).

Industrial design rights are of vital importance for any company and an indispensable part of an enterprise's IP portfolio. Accordingly, it is highly recommended that you take care to consult with an IP attorney regarding the possibility of registered protection immediately after finalizing a design and prior to such design's publication, to avoid losing the chance to increase the weight of your intellectual property portfolio and secure the future of a possible "star" product.

Written by Narda Ben Zvi, Adv., Partner and Head of High tech and IP department at Yaacov Salomon, Lipschutz & Co.

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