Novelty

In a way, the question of who came first applies to all intellectual property, except copyright. In designs, as with patents, this notion of priority plays out in regard to novelty — is the design new? Before we explore this concept of novelty, let’s first understand ‘why?’

The lawmaker (Parliament) recognises that if you are creative, you can benefit society. Music, art, literature, invention and design innovation all bring advantages to humankind. Well, does this mean that you should spend every Saturday afternoon for two solid years designing an innovative computer desk just to benefit society? Or are you to get compensation for all the toil and investment?

The lawmaker says ‘yes’, you can get compensation — there is a payback for contributing your creative talents to society. At least, you have the chance to be compensated. Registration gives you a monopoly on your design. For fifteen years (in the case of an aesthetic design) and ten years (in the case of a functional design) only you are entitled to exploit that design — and you can also license the use of the design. Remember, it is your property.

Symbiosis is the interaction of two different systems to produce a result beneficial to both. The design registration system is symbiotic in this sense: if you creatively use your ability to produce something beneficial to society, for a while you get a monopoly on its exploitation.

But here’s the catch. To be entitled to the monopoly, you must have produced something genuinely creative or innovative. It won’t be an innovation if someone has already done it — right? And if that is the case, your monopoly cannot really be justified, not so? That is why the Designs Act requires that to be registrable, your design must be new — what patent lawyers refer to as ‘novel’. This principle of novelty applies all over the world.

The novelty test asks whether the design was different from the state of the art at the date of your application for registration (i.e. when it was lodged with the Registrar of Designs).

Read section 14(2) of the Designs Act.

The ‘state of the art’ is a fancy expression, but it is quite easy to understand. Let’s say your design is for a new potato peeler, something like the one shown here.

The ‘art’ is the category of potato/vegetable peelers. The state of the art is reckoned at the point in time immediately before your design application is filed and refers to all the vegetable/potato peelers out there — what do they look like? The question is therefore: was yours different from any other peeler out there? (Petty differences do not count.) If it is substantially different from the state of the art, then it is new.

The simpler the design, the greater are the chances it is not new. But just because a design is simple does not mean it is not new.

Read section 14(3) of the Designs Act.

This is why it is so important that you keep your design confidential until the application for registration has been filed. Of course, the temptation to get feedback from the marketplace, and even starting to sell, is quite strong. However, if you do this before an application for registration has been filed, your design will not be new as at the date of application.

Prior disclosure to the public is novelty-destroying.

Nonetheless, these things are sometimes not so simple. One factor which can come into the determination as to whether a design is new is the definitive statement. Let’s take our example of the teapot with the seriously weird spout. Teapots are not new, but a teapot with this particular innovative spout has never been seen before. So, in our example, the definitive statement will refer to the design as being ‘the spout shown in the drawings as applied to a teapot’.

Accordingly, when we have to investigate what is called ‘prior art’ — in this case, all the teapot spouts out there — what we are looking for in order to determine whether our example is new is not all teapots, but teapots with that particular spout, or spouts that are substantially the same.

If there is prior art which is substantially similar to the design, we say that the design has been anticipated (Latin anticipo — ‘to come before’).

Let’s look further at the elements of the state of the art.

Previously made available to the public

The cornerstone of the question of novelty is this: at the date of the application for registration, has the particular design been made available to the public, anywhere in the world, in any way? This can be by way of an actual product, or in a picture, written description, video clip, etc.

When can it be said that a design was ‘made available to the public’? The answer is really common sense.

When the Designs Act stipulates that a design will not be novel if it has been made available (i.e. disclosed) to the public, it does not mean that 100% secrecy is required. Consider the following. If the design is for a supermarket shopping trolley, like our example, the industrial designer cannot be expected to toil away in solitary confinement with nothing but his drawing pad and a pen. He needs to know whether the trolley can be manufactured; what it will likely cost; can the required materials be sourced; will anyone (in other words, shopkeepers and supermarket chain stores) want to buy it; will it be big enough? Can it nest — that is, stack into other trolleys?

This chair’s design looks good, but how easily can it be manufactured? How much will it cost? At that price, will anyone be interested? To obtain all this information, the designer needs to speak to people: the manufacturer, the materials supplier, retail outlets likely to sell the product, etc.

The word ‘public’ comes from the Latin word publicus which means ‘belonging to the people’. (That’s why a ‘pub’ is where everyone can go to get a drink.) This indicates what is meant by ‘made available to the public’: can anyone who wants to get access to your design? Or, put differently, has it been disclosed only to a restricted few people? As we saw when dealing with copyright, ‘publish’ has the same meaning: has the work been made available to meet the reasonable demands of the consuming public?

However! It is advisable to have a written agreement with anyone to whom you show your design, recording confidentiality and restraining them from disclosing it. Get this agreement in place before you show it to them. Consult a lawyer about the wording and terms of an appropriate non-disclosure agreement (NDA).

Speak to a patent attorney for more detail and advice about these aspects of novelty and the state of the art.

The registered design for the ring depicted in the ‘What are registrable designs?’ section was not enforced by the High Court because very similar versions of the ring had been in prior existence, including one depicted in a Japanese jewellery brochure many years previously. The design in the registration was therefore anticipated.

Mosaicking

It has happened that an attack on the novelty of a design turns out to be based on what patent lawyers call mosaicking. We all know what a mosaic is, namely little pieces of glass, metal or tile, put together to form a decorative covering or picture.

In design law, mosaicking means taking little features from all over. Let’s say we are investigating the novelty of the trolley design featured in the Registration process section. We cannot allege that the design lacks novelty because once there was a trolley that had a basket with holes, and another trolley that had a chassis with the same arched wheel support, and yet another trolley whose basket had a front wall with an aperture to make a grip-hold — and so on. It is not permissible to try and refute novelty by mosaicking. The question is: was there ever a single trolley which combined all of these features into a single design? If not, the design is new.