If the configuration of a product is to be protected as a Design, the question arises about the extent of coverage and the territory where this is to apply. The following aspects need to be taken into consideration:
- Any protective rights covering the Design that might already be in existence in the respective section of products.
- The market and competition situation in the respective section of products concerning commercial and territorial aspects.
- Determination of the Design aspects to be protected.
- Financial means available.
- Manner of commercial use of the Design (own use, sale of the awarded Design or granting of licences).
All these points and others ought to be discussed in detail, preferably with an attorney at law or a patent attorney.
Application and filing
A Design shall be considered as filed when an application for registration is filed with the Swiss Institute for Intellectual Property. The request must include an application for registration together with an illustration suitable for reproduction. Illustrations should be prepared with great care and an expert should be involved, since illustrations determine the scope of protection. The applicant is also offered the possibility, against payment of a fee, to describe the article in no more than 100 words. Several Designs belonging to the same class according to the international Design classification (so-called Locarno Classification) may be combined for filing as cost-effective collective lodgement. In any case, the fee for the first protection term has to be paid within the time span laid down by the Swiss Institute for Intellectual Property (Art. 19 and 20 of the Design Act).
Filing a Design establishes the assumption of novelty and uniqueness and provides the justification for its lodgement (Art. 21 of the Design Act). A third party may however at any time disprove said assumption by way of litigation.
If the Swiss Institute for Intellectual Properties is handling the application for filing, it will examine whether a Design is, on the one hand, meeting the definition of Art. 1 of the Design Act (see Concept of a Design) and, on the other hand, whether the Design violates any Federal law or international treaties, whether it contravenes public order or offends any morals (Art. 21 of the Design Act). In the context of the registration procedure before the Institute for Intellectual Property, the question of whether the Design is meeting the protection requirements of novelty and uniqueness or whether its features are of a purely technical nature is not examined.
Like the laws governing trademarks, the Design laws follow the principle of filing priority. This means that whoever files the first application will have a better right to the Design (Art. 6 of the Design Act). Attention must be paid in this context to Art. 4 of the Paris Convention for the Protection of Intellectual Property (PVÜ/PCPIP) which in the case of existence of an identical Design lodgement in another member state of the PCPIP, allows the first date of filing to be claimed in another member state within 6 months after the first filing (see also International Protection).
Anyone wishing to lodge a priority claim supported by Art. 4 PCPIP must observe the relevant formalities of Swiss law.
Grant of Design protection and publication
A Design filed in accordance with statutory provisions will be entered in the Design Register and published (see www.swissreg.ch). This will convey full protective rights to the holders. In harmony with European law, the Design Act offers the possibility in the registration procedure to apply for a postponement of publication by 30 months maximum (Art. 26 para. 1 Design Act). In such a case, the Institute will keep the deposited Design secret until expiry of the postponement term or until the applicant has requested an immediate publication (Art. 26 para. 3 Design Act).