(I) BROADENING SCOPE OF REGISTRABLE DESIGNS
Scope of registrable designs has been broadened to include non-physical products that have an intrinsic utilitarian function, such as virtual or projected designs, which are produced by projection of a design on a surface or into a medium, for example, virtual keyboards or control panels projected by light onto a surface or into a medium.
Colours may now be specified as a feature of a design for which protection is sought. However, where colour is selected, then at least one other group of features, namely “shape and configuration” or “pattern and ornamentation”, needs to be selected as well since the scope of design protection will not extend to colours per se.
Also designs of articles made by hand, and not just manufactured by industrial process, such as handicrafts and handmade jewellery are now registrable.
(II) CHANGING DEFAULT OWNERSHIP OF COMMISSIONED DESIGN
Previously, the person commissioning a design was the de facto owner of it. Under the RDAA 2017, the rights to a design will vest in the designer by default. However, the parties will be at liberty to enter into a contract to assign the rights to the commissioner of the design.
(III) BROADENING AND LENGTHENING OF GRACE PERIOD FOR DISCLOSURE OF DESIGN
The circumstances covering disclosure of a design made on or after 30 October 2017 have been broadened and the grace period of such disclosure lengthened to 12 months immediately before the date of filing of the design application.
Under the RDAA 2017, an application for or registration of a design must not be refused or revoked if disclosure of the design is made to a person other than the designer (or any successor in title of the designer) under conditions of express or implied confidentiality or if disclosure was made as a consequence of an abuse in relation to the designer during the period of 12 months immediately before the date of filing of the application for registration of the design.
Also an application for or registration of a design must not be refused or revoked if disclosure of the design is made by the designer or made by a person other than the designer in consequence of information provided, or any other action taken, by the designer during the period of 12 months immediately before the date of filing of the application for registration of the design.
Further, disclosure of the design to be registered in respect of non-physical product made before the date of filing of that application will not cause the design to be refused or revoked if that application is filed during the period of 12 months immediately after 30 October 2017.
With the removal of former restrictions limiting disclosures to selected international exhibitions, designers now have more time and flexibility to test their design in the market without losing novelty as well as assurance of their rights to obtain design protection due to unintentional prior disclosure.
(IV) MULTIPLE DESIGNS IN A SINGLE APPLICATION
It is now possible to file up to 50 designs within a single application provided all such designs fall within the same Locarno class(es). However, every design in such a multiple design application will be treated as a separate application and there is no cost savings in official fees.