UKIPO releases long awaited design practice note, changes rules for animated registered designs

Historically, the UKIPO’s rules for registering animated designs have been stricter than those in the EU and other countries. These restrictions especially affect animated GUIs, forcing gaming and software applicants to make tough decisions and leading to uneven protection between the UK and EU.  This has now changed, with new design practice note published today taking immediate effect.  We explore what this means for design applicants in the UK. 

The historic approach

While it has long been possible to file registered designs for an animated sequence in the UK, the previous guidance would result in refusals being raised if the sequence of images contained the addition or removal of elements.  For example, a design consisting of a video-game character which throws a ball and then punches the air would likely receive a refusal if the ball disappears from the images mid-way through the sequence.   

Typically, the applicant would overcome the refusal by altering the images, introducing disclaimers, or splitting the design up.  However, each of these approaches comes with potential drawbacks, including (but not limited to) the potential loss of priority claims, loss of novelty and/or a reduction in enforceability or deterrent effect.  

Key changes explained – welcome clarification and greater freedom 

The UKIPO has now published Design practice Notice 1/26, with input from CMS and other UKIPO stakeholders.  The most impactful changes are summarised as follows: 

1. Design applications for animations will now be accepted, even if elements are added or removed during the animation sequence, so long asthe overall impression can be ascertained clearly, easily, and unambiguously from the representations filed.   
2. Applications should now mention that protection is sought for an animation in the (unpublished) design description field (e.g. “animated graphical user interface” rather than “graphical user interface”).   
3. To meet the requirements of clarity, applicants should use a separate image for each step in the animation sequence. 
4. Applicants could always use written disclaimers to provide further information about the nature of the transition between representations, but there is no guidance that disclaimers must be straightforward and unambiguous.  If the disclaimer requires “a high degree of interpretation to be understood,” an objection may be raised.  
5. Applicants are reminded that UK design protection is not intended to protect all embodiments of an idea or process - what is protected is the specific visual representation shown, which is enforceable against articles which do not create a different overall impression from the images in the registered design.

Key changes considered – potential impact during the transition period

While applicants will welcome the more permissive approach overall, the changes are also likely to result in a degree of uncertainty while examiners and practitioners develop a feel for the practical limits of the new approach. For example, the guidance also suggests that: 

• Each animated sequence should be “self-contained”.  This may result in more complex animations being split up if they could be interpreted as multiple self-contained sequences.  The limits of this guidance will need to be tested to be fully understood.
• Design applications containing two distinct visual appearances may receive objections.  For example, if there are too many changes between two of the frames within a sequence (particularly in the middle of the sequence) an examiner may expect the designs to be split up.  Given mobile GUIs commonly transition between different screens (e.g. between a main game and a mini game or a home page and a messages page) applicants may find that more designs are needed than initially anticipated.
• Applicants are expected to use as many representations as possible to avoid ambiguity.  Up to 12 images are permitted in the UK, which is more than other jurisdictions like the EU (which permits 7 images).  While on the one hand more images will provide more flexibility to show the stages of complex animations, additional artwork may be required and asymmetrical filings between the UK and EU and other jurisdictions may result.  
• Although disclaimers are advisable for reducing ambiguity, their implementation requires careful consideration. If disclaimers are added or changed after filing, and the result is a significant impact on the scope of protection, this may result in the application being re-dated to the date of the amendment.  This could result in the loss of priority claims or self-disclosure periods. 

Key conclusions

• The UK regime remains an extremely cost-effective filing jurisdiction.  Not only are low design filing fees being retained, but the lack of substantive examination, the speed to registration and the access to both the English and Scottish courts make UK design registrations a key asset to those seeking to protect their GUIs and other designs.  
• These changes will give applicants greater flexibility to reflect their designs on the UK register and over time will make the system even more applicant friendly.  
• However, it will take some time for the practical implications of these changes to be fully understood.   During the transition, applicants are advised to consider their UK design strategies earlier than usual.   
• In addition, would-be applicants who are within the priority and/or self-disclosure periods may also wish to reconsider whether any recently filed or considered designs would benefit from being filed or re-filed under the new system.