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Can prior art affect design registration?

Definition of Prior Art in Design Law

  • Prior art refers to any design that was disclosed before the filing date.
  • It includes previously registered designs in any country.
  • Public use, publication, or commercial availability may count as prior art.
  • Prior art must relate to similar or identical visual features.
  • It serves as a reference point to assess the novelty of a new design.

Impact on Novelty and Originality

  • A design must be new and original to qualify for registration.
  • If similar design features are already in the public domain, the application can be rejected.
  • Prior art undermines the originality requirement under the Designs Act, 2000.
  • Lack of novelty is a valid ground for objection by the examiner.
  • Applications found to match prior art are considered invalid.

Search and Examination Process

  • The Design Office conducts a novelty examination during processing.
  • Examiners compare the applied design with existing registered designs.
  • Global databases and published materials may be consulted.
  • A design search by the applicant before filing helps avoid rejection.
  • If prior art is discovered, the applicant may amend or withdraw the design.

Challenges from Third Parties

  • Any person may file a cancellation petition based on prior art.
  • Competitors or interested parties can cite earlier publications or registrations.
  • Evidence such as catalogs, advertisements, or online listings may be used.
  • If successful, the registered design can be invalidated.
  • Post-registration challenges are subject to examination by the Controller.

Best Practices to Avoid Conflicts

  • Conduct a comprehensive design search before filing an application.
  • Maintain records of creation dates and development processes.
  • Avoid using design features that are widely known or commonly used.
  • Consult professionals for evaluating the risk of prior art.
  • Modify the design sufficiently to distinguish it from known works.

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