Designs – Comparisons between deferred publication in UK/EUIPO
Registered design applications filed with the European Union Intellectual Property Office (EUIPO) and the UK Intellectual Property Office (UKIPO) are normally published shortly after filing.
However both the EUIPO and the UK Intellectual Property Office offer the possibility to ‘defer publication’, which allows applicants to prevent automatic publication of their design registrations shortly after filing, but instead to delay publication to a later date. Any request for deferred publication must be made at the time of filing the application. By deferring publication (sometimes referred to as ‘deferring registration’) the contents of design registrations can be kept out of the public domain and thus kept secret for a longer period of time, for example until after products incorporating the design(s) are released to the public.
Deferring publication is particularly useful for products intended for release at a specific launch date or event as it allows the design registration to be filed in advance, but the design kept under wraps in the meantime. Similarly, if an applicant is considering obtaining patent protection for a product, or registering further similar designs, deferred publication can be used to prevent the publication of the design from becoming prior art for such subsequently filed patent applications or further design registrations. If the launch date for a product is pushed back, an applicant can withdraw a design from an application during the deferment period and the design will not publish which may allow a fresh application to be filed in its place.
For EU registered design applications, publication can be deferred by up to 30 months from the earlier of the filing or priority date.
A subsequent request to publish a deferred EU design must be filed with the EUIPO at the latest by the last day of the 27th month following the filing date or priority date, otherwise the design will remain unpublished and the design registration will be as if it never existed. When subsequently requesting publication, an applicant has the option to indicate whether they wish the EUIPO to publish the design as soon as possible, or at the end of the deferment period.
The EUIPO does not issue reminders of when the 27-month period expires and so the onus is on the applicant to ensure this critical deadline is not missed.
For UK design applications, registration (and hence publication) can be deferred by up to 12 months from filing the filing date of the application. Failure to subsequently request registration of a deferred design results in the application being cancelled without refund of the application fee.
Beneficially, at both the EUIPO and UKIPO, publication can be deferred for selected individual designs of a multiple design application, however deferring publication requires the payment of an official fee in addition to the usual filing and/or publication fees.
In the EU the deferment fee is €40 for a single design or for the 1st design in a multiple design application, €20 for each additional design 2-10, and €10 for the 11th and subsequent designs in a multiple design application.
In the UK the deferment fee is £40 for a single design or for the 1st design in a multiple design application, and £20 for each additional design in a multiple design application. Where publication is deferred, the initial UK application fee is marginally reduced.
Given the difference between the maximum terms of deferment in the UK and the EU, for applicants filing for design protection in both the EU and the UK and wishing to keep their design unpublished for as long as possible, the order of filing the respective applications is important. If the UK application is filed first, the maximum period of time for which the design can remain unpublished is 12 months. However, if the EU application is filed first, and the UK application filed subsequently with a valid claim to priority from the EU application, the maximum period of time for which the design can remain unpublished can be increased to up to 18 months.