Appendix A
Letter from the Committee Specialist to The Patent
Office
Proposal for the Regulatory Reform (Registered
Designs) Order 2006: request for information
Thank you for your very helpful presentation on 21
March on the subject of this RRO proposal.
The Committee considered the proposal and decided
to seek your further comments on a number of points. The issues
which concern the Committee are set out below, under the relevant
categories for consideration in the Regulatory Reform Act and
the Committee's Standing Order (references to the Standing Order
are printed below in italics).
Whether the proposal requires elucidation,
is not written in plain English or appears to be defectively drafted
(S.O. No 141 (6)(h))
1. Where the 1949 Act refers to a section of that
Act, it always does so in terms of "section X of this Act".
Most of the amendments made by the proposed Order maintain this
approach, but those in articles 8 and 9 do not. A consistent approach
would be in keeping with proper drafting practice.
Q 1 Please indicate whether the Patent Office
agrees that that articles 8 and 9 should be changed so that the
provisions which they amend will continue to refer to sections
"of this Act".
Whether the proposal would remove or reduce
a burden or the authorisation or requirement of a burden (S.O.
No 141 (6)(b))
2. The Committee notes that the Patent Office proposes
to repeal section 3(4) of the 1949 Act which gives the registrar
power to make searches for the purpose of deciding whether, and
the extent to which, a design application is new or has individual
character.
Q 2 Please indicate what number of design
applications each year are the subject of an initial objection
by the registrar on novelty grounds and of these, how many go
on to secure registration, how many are rejected by the registrar
and how many are discontinued by the applicant.
Q 3 Please provide an indication of the typical
delay and cost involved for applicants in challenging an initial
objection from the registrar to the registration of a design.
Whether the proposal has the effect of continuing
any necessary protection as required in Section 3(1)(a) of the
Regulatory Reform Act 2001 (S.O. No 141(6)(c))
3. The Committee notes that under the proposal there
would no longer be any power for the registrar to carry out novelty
searches with respect to design applications and the validity
of any registered design on novelty grounds would only be considered
when application for a declaration of invalidity in respect of
it was made to him by the proprietor of another design under section
11ZB of the 1949 Act.
Q 4 Please indicate whether it is intended
that the registrar will in practice accept a design application
even if he knew that a similar design was already registered.
Would he draw it to the attention of the applicant so as to protect
the rights of the original designer and prevent the applicant
from liability for claims against him?
Q 5 Please explain the process for making
an application to the registrar for a declaration of invalidity
and the costs involved in this.
Q 6 Please explain on what basis the Patent
Office has predicted that only slightly more invalid designs would
be registered under the new proposals.
Q 7 Please explain how the rights of small
businesses are protected where under the proposal they would be
required fully to assume the burden of proving a design was invalid
on the basis that it was an infringement of their rights in prior
art.
Whether the proposal has been the subject of,
and taken appropriate account of, estimates or increases or reductions
in costs or other benefits which may result from its implementation
(S.O. No 141 (6) (m))
4. The Committee notes that the effect of articles
11 to 15 of the proposed Order would be to permit a single application
to cover details of a number of individual designs. The Patent
Office considers that allowing multiple design applications will
make it possible to reduce costs for applicants who would otherwise
need to apply separately for each design. The Patent Office has
forecast that the processing costs per applications will reduce
by 30% in respect of multiple applications, and that this equates
to about £20 per design.
Q 8 Please explain how the Patent Office will
ensure that the proposed provision for multiple design applications
does not have the effect of reducing applications costs for large
businesses while increasing by displacement the registration costs
for those who apply to register single designs.
Q 9 Please explain on what basis the Patent
Office forecasts that processing costs for multiple applications
will fall by 30%.
Other matters arising from the Committee's
consideration of the proposal (S.O. 141(5))
5. The Committee notes that Patent Office considers
the effect of this Order would be to make it more attractive for
designers to register designs in the UK, rather than the alternative
of registering at the European Design Registry.
Q 10 Please explain the benefits to UK businesses
of a modernised UK design registration system and any drawbacks
for businesses of the EU level scheme.
Q 11 Please explain the benefit to the UK
overall of encouraging domestic registration of designs as an
alternative to EU level registration.
6. The Committee notes that the majority of those
who currently submit design applications to the UK Design Registry
do so without the benefit of professional advice.
Q 12 Please explain what guidance may be available
to design applicants in preparing applications and, specifically,
in deciding whether to submit design applications to the UK Design
Registry or to the alternative registration processes at EU level.
Is it intended to make any change to guidance, in whatever form,
to take account of the legislative changes to which this proposal
would give effect?
7. The Committee notes that the Registered Designs
Act 1949 applies throughout the United Kingdom.
Q 13 Does the Patent Office consider that
it might be helpful, given the application of the Order to Scotland,
to specify in the Explanatory Note to the Order that consultation
has been carried out with both the Welsh Assembly and the Scottish
Parliament, neither of which have offered any comment on it?
I would be grateful to receive your response to these
questions, together with any additional information which the
Patent Office believe would be helpful to the Committee not later
than Monday 10 April 2006. In the meantime, if you
would like any further information or clarification concerning
the Committee's request, please let me know.
23 March 2006
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