UKIPO Details Examination Procedures and Post-Registration Protocols for Registered Designs

The UK Intellectual Property Office (UKIPO) has issued detailed guidance on the examination report, examination procedures, and post-registration processes relating to registered designs under the Registered Designs Act 1949 (RDA). This guidance clarifies applicant obligations, timelines, and rights during prosecution and after registration.

Applicants are allowed a two-month period under Rule 8 to respond to objections where the design fails to meet the definition set out in Section 1(2) of the RDA, as outlined in Design Practice Notice (DPN) 02/2022. For cases involving representations not suitable for publication, Rule 9(2) grants a three-month response period. However, if both substantive objections and unsuitable representations apply, the three-month period for new representations only begins once substantive objections are fully resolved, consistent with Rule 9(1).

While Rule 39 does not limit the number of time extensions during prosecution, examiners aim to resolve issues promptly, typically permitting only one extension unless further time is justified by persuasive reasons. For deferred applications, extensions beyond the allowable period for requesting publication are prohibited under Section 3(5) RDA and Rule 10(1).

When an examiner raises objections—whether formalities or substantive—the applicant receives a written Examination Report detailing the relevant statutory provisions and reasoning behind the refusal. Applicants may submit written submissions before the deadline to persuade the Registrar to waive the objection.

If the examiner maintains the objection, the applicant may request an ex parte hearing before a senior Registrar representative. Should the objection be waived at hearing, the application proceeds to registration upon meeting all other requirements. The Hearing Officer issues a Hearing Report summarizing arguments and the rationale for the decision, whether to maintain the objection or accept the design.

Failure to address objections at either the examination or hearing stage results in application refusal. Dissatisfied applicants may request a full statement of grounds within one month of refusal by submitting Form DF5. Further dissatisfaction allows an appeal to the Appointed Person or the Courts. Appeals to the Appointed Person require Form DF55 within 28 days of the Registrar’s decision and are final, unlike court challenges.

Applicants may withdraw their application at any time before registration, either wholly or partially in multiple applications. Upon receiving a written withdrawal request, the examiner confirms action by letter. Withdrawal takes effect when actioned; if registration occurs before this, it cannot be reversed. Therefore, withdrawal requests should be clearly titled and marked urgent.

Once registered, cancellation is possible only via Form DF19C submitted by the proprietor or representative. Cancelled registrations remain open to inspection per Section 22 of the RDA.

To notify third parties of design protection, rights holders may mark products with the word “registered” or an abbreviation plus the registered design number. Alternatively, a free-access internet link associating the product with the design number may be used. Section 24B of the RDA provides that damages are not payable by infringers who prove ignorance of the registration at the infringement date, unless the product is marked as described, which removes this defense.

This guidance ensures applicants understand their procedural rights and obligations during examination and after registration, promoting clarity and effective protection of registered designs in the UK.