26/09/2016
Some confusion was definitely felt this week when a story broke on news websites1,2 across the world that a man had ‘patented’ a Hamdog – a bread bun that can accommodate both a burger and a hot dog sausage. It seemed inconceivable that the US Patent Office (USPTO) had accepted that a new shape of bun was a patentable invention.
In fact, what Mark Murray, devisor of this culinary marvel, had done was register a design for his Hamdog bun at the USPTO (US D584478). Were the news agencies wrong? Had they incorrectly used the term ‘patent’?
In this case the online stories were technically accurate because, in the US, protection for a design is set out in a ‘design patent’. Confusion arose on our side of the pond because in the UK and Europe we use the term ‘registered design’, and we would never refer to a registered design as a patent, or vice versa.
Having cleared up this confusion surrounding the Hamdog, this is a good opportunity to set out some of the most common sources of confusion between patents and registered designs in the UK and Europe.
What is a patent? What does it protect?
Patents protect technical aspects of an invention. Protection is not automatic when a new invention is made – an application has to be made to the Patent Office, and a patent must then be granted before it can be enforced. The protection can last up to 20 years.
Patents can cover inventions that are new and inventive and capable of industrial application (i.e. an invention must have a practical application). The invention can be a product or a process. The UK and European Patent Offices have similar restrictions on things that cannot be patented – including scientific theories, mathematical methods, music, literature and aesthetic creations.
What is a registered design? What does it protect?
A registered design is directed only to the outward appearance of a product. A limited form of protection arises automatically when a design is first created, but registering the design allows the owner to prevent others from using the same or similar design. The protection can last up to 25 years.
Registered designs can cover the appearance of a product or part of a product if it is new and has individual character. The shape, texture and surface decoration can all be protected. Aspects of a product that are necessary to perform a function cannot be protected.
Why do we have separate patents and registered designs?
As set out above, patent protection cannot be used for aesthetic creations, and design protection will not cover functional parts of a product. These two types of protection are intended to be complementary, each protecting a different aspect of a product.
Can I obtain both a patent and a registered design at the same time?
There is no single application process that will result in both a patent and a design. However, applications for each can be, and often are, obtained in tandem.
In the UK, the Patent Office (UKIPO) grants both patents and registered designs. In Europe, patents are granted by the European Patent Office (EPO), while the European Union Intellectual Property Office (EUIPO) grants registered designs.
How long does it take to obtain patent and design protection?
Obtaining patent protection usually takes between three and five years in the UK and Europe. It is much faster to register a design – registration can often be obtained in a matter of months.
On the whole, we recommend discussions with your patent attorney about all types of protection that might be available to your invention. Registered designs and patents are intended to be used in tandem, and one may be available where the other is not. Trade marks and copyright, not discussed in this article, can provide additional forms of protection. Mr Murray is currently offering licences for $10,000 to people wanting to become Hamdog ‘resellers’. This is perhaps evidence that correctly protecting your creation can really pay off.
- http://www.news.com.au/lifestyle/food/eat/the-hamdog–a-cross-between-a-hamburger-and-a-hotdog–is-here/news-story/ecf2fbb9bb28fd5c026deb2745942406
- http://www.bbc.co.uk/newsbeat/article/37420032/australian-man-patents-the-hamdog—a-hotdog-and-burger-combo
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
