DESIGNS
Overview
A design registration protects the visual appearance of a product.
Unlike a patent, there is no requirement that a design registration is inventive. For this reason a design registration can be a very effective form of protection. It is quite common for a design application and a patent application to be filed at the same time.
Requirements
In Australia, a design registration must be new and distinctive. If a design exists in a relatively cluttered field then relatively small differences may be sufficient to provide the design with distinctiveness.
In Australia, a design application must be filed before the design is disclosed to a member of the public in non-confidential circumstances. There is a deeming provision that might provide for some disclosure before filing in limited circumstances. As a rule of thumb, Australia generally provides no grace period for prior disclosures. Comparatively, the US and Europe provide a twelve month grace period for prior disclosures. Further information is available on request.
Most countries including Australia examine design applications with regard to disclosures and publications on a worldwide basis.
Examination
In Australia, examination of a design is optional and may be requested by the applicant or a third party.
A design cannot be enforced unless the design has been examined and certified. In order to avoid costs, it may be advisable to apply for but not to request examination of a design.
Copyright/Design Overlap
Section 75 of the Copyright Act seeks to remove any copyright residing in shape and configuration when a corresponding design is registered. The topic of copyright/design overlap is a very complicated area of the law.
Function
By legislation, the fact that a visual feature of a design has a functional purpose is not relevant to whether the design is able to be registered.
In practice, however, functional designs may be difficult to proceed to registration. In the Australian Examiners' Manual it is noted that 'features of a design that do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform, and which are consistent with a variety of particular shapes in articles copying those features, are not amenable to protection'.
Term of Protection
When a design application is filed in Australia, 6 months of provisional design protection is provided in all convention countries.
The term of protection in Australia for a design registration is ten years. A single renewal fee is payable after five years.
Overseas Applications
It is possible to file a design application in a convention country up to six months after first filing a design application in Australia. Further information is available on request.
There is no such thing as a worldwide design registration.
A design registration protects the visual appearance of a product.
Unlike a patent, there is no requirement that a design registration is inventive. For this reason a design registration can be a very effective form of protection. It is quite common for a design application and a patent application to be filed at the same time.
Requirements
In Australia, a design registration must be new and distinctive. If a design exists in a relatively cluttered field then relatively small differences may be sufficient to provide the design with distinctiveness.
In Australia, a design application must be filed before the design is disclosed to a member of the public in non-confidential circumstances. There is a deeming provision that might provide for some disclosure before filing in limited circumstances. As a rule of thumb, Australia generally provides no grace period for prior disclosures. Comparatively, the US and Europe provide a twelve month grace period for prior disclosures. Further information is available on request.
Most countries including Australia examine design applications with regard to disclosures and publications on a worldwide basis.
Examination
In Australia, examination of a design is optional and may be requested by the applicant or a third party.
A design cannot be enforced unless the design has been examined and certified. In order to avoid costs, it may be advisable to apply for but not to request examination of a design.
Copyright/Design Overlap
Section 75 of the Copyright Act seeks to remove any copyright residing in shape and configuration when a corresponding design is registered. The topic of copyright/design overlap is a very complicated area of the law.
Function
By legislation, the fact that a visual feature of a design has a functional purpose is not relevant to whether the design is able to be registered.
In practice, however, functional designs may be difficult to proceed to registration. In the Australian Examiners' Manual it is noted that 'features of a design that do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform, and which are consistent with a variety of particular shapes in articles copying those features, are not amenable to protection'.
Term of Protection
When a design application is filed in Australia, 6 months of provisional design protection is provided in all convention countries.
The term of protection in Australia for a design registration is ten years. A single renewal fee is payable after five years.
Overseas Applications
It is possible to file a design application in a convention country up to six months after first filing a design application in Australia. Further information is available on request.
There is no such thing as a worldwide design registration.
Conventional Products
Types of Registration
Conventional registration extends to nearly all conventional products. Some limited exclusions may apply to buildings.
Representations
The number of representations that are required to show a design will depend on the complexity of the design.
At a minimum the following representations are recommended:
i) perspective view; ii) front view; iii) side view;
iv) top view; and v) bottom view.
It is advisable to file formal line drawings to maintain a relatively broad scope of protection.
Newness and Distinctiveness
Filing a specific statement of newness and distinctiveness is often useful.
Conventional registration extends to nearly all conventional products. Some limited exclusions may apply to buildings.
Representations
The number of representations that are required to show a design will depend on the complexity of the design.
At a minimum the following representations are recommended:
i) perspective view; ii) front view; iii) side view;
iv) top view; and v) bottom view.
It is advisable to file formal line drawings to maintain a relatively broad scope of protection.
Newness and Distinctiveness
Filing a specific statement of newness and distinctiveness is often useful.
User Interfaces
Types of Registration
User-interface (UI) type designs have found popular renown in the line of Apple v Samsung cases.
In Australia there is a view that the Australian design system does not allow for the valid protection of user-interface type designs.
The Australian Law Reform Commission’s Report noted that: "in the Commission's view, a screen display is a use of a product rather than a product". There have been decisions in which user-interface type designs have been refused on this basis (See Altoweb (2002) 55 IPR 656).
Nonetheless there are many user-interface type designs registered in Australia (see below). Notably, however, we have only been able to locate a few certified designs entitled 'Display screen with graphical user interface'. It would seem that this is the best approach in Australia noting however that the validity of a design in this area cannot be guaranteed.
An issues paper has tabled the topic for further consideration.
Reading Links - Software (2014)
1. FUNCTIONALITY AND GRAPHICAL USER INTERFACE DESIGN PATENTS; Michael Risch; 17 STAN. TECH. L. REV. 53 (2013)
2. How To Protect UI with Design Patents (Bressler Group)
3. Strong Design Patents: The Power of The Broken Line (IPWatchDog)
User-interface (UI) type designs have found popular renown in the line of Apple v Samsung cases.
In Australia there is a view that the Australian design system does not allow for the valid protection of user-interface type designs.
The Australian Law Reform Commission’s Report noted that: "in the Commission's view, a screen display is a use of a product rather than a product". There have been decisions in which user-interface type designs have been refused on this basis (See Altoweb (2002) 55 IPR 656).
Nonetheless there are many user-interface type designs registered in Australia (see below). Notably, however, we have only been able to locate a few certified designs entitled 'Display screen with graphical user interface'. It would seem that this is the best approach in Australia noting however that the validity of a design in this area cannot be guaranteed.
An issues paper has tabled the topic for further consideration.
Reading Links - Software (2014)
1. FUNCTIONALITY AND GRAPHICAL USER INTERFACE DESIGN PATENTS; Michael Risch; 17 STAN. TECH. L. REV. 53 (2013)
2. How To Protect UI with Design Patents (Bressler Group)
3. Strong Design Patents: The Power of The Broken Line (IPWatchDog)
Examples
Mechanical
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UI
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UI's Registered on AU database
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DESIGN LINKS
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IP Australia: Australian Patent Office
http://www.ipaustralia.gov.au/ Info date: 28/10/2009 ------------------------------------------------------------------- The Australian Patent Office website provides information on Australian designs. The website provides access to the designs database. The design database can be searched by owner, article, and date. |
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OHIM: Office for Harmonization in the Internal Market
http://oami.europa.eu Info date: 28/10/2009 ------------------------------------------------------------------- OHIM is the official trade marks and designs registration office of the European Union. The OHIM website provides information on the Registered Community Design (RCD) covering 27 member states of the European Union. |
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USPTO: US Patent Office
http://www.uspto.gov/ Info date: 28/10/2009 ------------------------------------------------------------------- The United States Patent Office website provides information on US design (design patents). The website allows searching of the US patents database. |
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Wikipedia: Trade Marks
http://en.wikipedia.org/wiki/Design_patent Info date: 28/10/2009 ------------------------------------------------------------------- The Wikipedia section on design provides some useful information. |
*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.
