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Intellectual Property Insights

Patent & design applications are not mutually exclusive, and there are many instances in which it would be advantageous to file both patent & design applications for the same new product. In such a case, the patent would typically aim to protect the broad inventive concept of the product, while the registered design application would typically aim to protect the specific appearance of the product.  In such a case, the owner of the intellectual property rights may institute legal actions based on either the patent or the registered design, or both.

Filing a Design application instead of a Patent application

CONS:

  • Does not necessarily protect the working of the new product.
  • Generally provides a narrower scope of protection.
  • Shorter duration compared to patent.

PROS:

  • Protects the specific appearance of the new product.
  • Legal requirements to obtain a valid registered design are less stringent.
  • Often quicker to file, because a patent specification does not have to be drafted.  This is important, because it can provide an early priority date.
  • The South African Designs Act allows for a 6-month novelty grace period.  Thus, even if the new product has already been disclosed (which would exclude the possibility of filing a patent application), the designer may still file a South African registered design application within the first 6 months after the public disclosure.
  • Cost of a South African design application is substantially less than filing a patent application.
  • Design applications are prosecuted more expeditiously, and thus an enforceable right is obtained sooner.
  • Design infringement proceedings are often simpler, as they are based on the drawings as filed (and not on the wording used in a patent specification).

Registered Designs in South Africa

In South Africa, a design can either be registered as an aesthetic design, which protects the aesthetic features of the article, or a functional design, which protects the features that are necessitated by the function that the article is meant to perform. South African Design

Aesthetic Designs

An Aesthetic Design protects features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof, but excludes features which are necessitated solely by the function the article is intended to perform. A registered aesthetic designs provides a 15-year monopoly in South Africa.

Functional Designs

A Functional Design protects those features of an article which are necessitated by the function which the article is to perform. A registered functional design provides a 10-year monopoly in South Africa. A design which contains both aesthetic and functional features should ideally be filed as both an aesthetic and a functional design (if the intension is to protect both types of features). Thus two South African registered design applications are required.

International Design protection

Generally, within 6 months from the filing of a South African Design application, foreign design applications may be filed claiming priority from the South African Design application.  Thus, within the first 6 months, a South African Design application will reserve your rights in most countries of the world.

Posted on 16 April 2021
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