Direct Filing with National Patent & Trademark office
Following can file Design Applications:
a). Author of the Design
b). Employer of the author if Design made during course of employment
c). Person contracting the author to make the design
d). Person to whom the author has assigned the design in writing.
Two or more persons owning interests in the design must apply jointly.
Statement of Novelty: Novelty refers to originality, something new or unusual. In this context, if the Controller General so deems necessary, may direct the applicant to endorse the application and the representations with a brief statement of novelty that he claims over the designs so submitted for registration.
Prior Disclosure destroys novelty of the Design so extreme care has to be taken to maintain secrecy of the Design. However, in Finland, applicant can file the application within 12 months after disclosure which will still retain novelty.
To come under the scope of registration, a Design should:
i. Be new and / or original
ii. Not have been disclosed to the public anywhere by publication in tangible form or by use in any other way prior to the filing date or where applicable, the priority date of the application for registration to which a 12 month exception is provided.
iii. Be significantly distinguishable from known designs or combination of known designs.
iv. Not contain scandalous or obscene matter, or be contrary to public order or morality.
v. Not be a mere mechanical contrivance.
vi. Be applicable to an article, should appeal to the eye.
Original here means, originating from the author of such a design and includes those cases which though old in themselves , are new in their application as well.
· A drawing or a model contrary to public order or morality.
· A drawing or a model that relates to a computer program.
· A drawing or a model whose characteristics are solely dictated by technical function of the product to which it relates.
· A product that needs to be combined with another product, so that each can perform its function.
· Designs which have been disclosed to the public anywhere in the world by publication in a tangible form or by use or in any other way prior to the filing date. However, a 12 months exception is given to this rule.
· Designs disclosed in the European Economic Area.
· Designs which are not significantly distinguishable from known designs or combination of known designs or
· Comprises or contains scandalous or obscene matter.
i. Finding out whether such a design has been registered previously.
ii. Preparing a representation of the design
iii. Identifying the class of design.
iv. Providing a statement of novelty.
v. Including a disclaimer that the design has not been in the public domain at any point in time.
vi. Claiming a priority date if the design Is registered in other countries.
vii. Determining the fee to be paid.
viii. Ensuring all enclosures are attached.
ix. Complying with objections if any.
x. Providing full details pertaining to contacts and addresses.
Several designs may be combined in one multiple application as long as the products belong to the same class.
Upon receipt of the design application, it is numbered and dated and is given a formalities examination. Any defects to be remedied by the applicant within stipulated time.
Substantive examination relating to similarity and identity with current designs registered in the register and designs removed from the register is carried out. If none found, design continues to registration.
Once accepted for registration, the design registration is published for opposition if any by third parties in the Design Gazette.
The opposition period is for 2 months within which interested third parties to file their opposition to registration of the design.
If there are no oppositions filed against the registration of the said design within this 2 month period, registration of the design is deemed final and a Certificate of Registration issued to the applicant.
Protection to the design is initially given for 25 yrs, renewable consecutive 5 yr. Periods totalling to 25 yrs in all.
Maximum term of protection for a design part of a complex product which is used to restore the original appearance of the complex product is 15 yrs.
WHY PROTECT DESIGNS IN FINLAND? Patent law deals in ‘behind the scenes’ aspects of a company or organization as it deals with inventions that are not easily accessible by the general public. Designs along with Trademarks on the other hand, are the ‘visual medium’ which aid in brand projection, recognition, association and retention by existing and potential customers. To prevent rivals from copying industrial designs, it is therefore an important and strategic aspect in the protection of intellectual property rights. Therefore, as with all IP, it is better to begin protection of designs at the earliest before disclosure with the general public.
BENEFITS OF INDUSTRIAL DESIGN REGISTRATION IN FINLAND: Certain countries that follow cumulative protection of Industrial Designs by Copyright as well as Design laws have the ‘Unity of Art’ principle that needs to be followed meaning, entitlement to copyright for applied and other art work shall be determined through the same criteria.
In today’s highly impulse driven and temperament market, industrial designs provide the requisite edge to push products into consumers’ psyche. Such is he craving for fashionable and well crafted products that looks can often be equally or more important that the products’ functionality itself.
Registration of Industrial Design Rights becomes a valuable asset which gives the following benefits:
• A substantial return on interest (ROI) as the popularity of the product is directly proportional to its reproduction and counterfeiting thus enabling swift legal action in preventing copycats and frauds thereby ensuring that the design is not diluted.
• Infringement of designs can help owners obtain damages and recover costs for the same.
• Registration of designs can help owners work on bettering their designs through Research and Development (R&D) on bringing out superior industrial designs thus making it harder to knock off or scale up manufacturing by infringers in order to copy the original designs.
• Registered designs can be sold, licensed, franchised which can all earn royalty. The same can also be used as a collateral to secure loans.
• Industrial Designs complement even strengthen Trademarks hence making brand attention, brand association and retention, brand recall and usage much easier and interesting.