Australia: Proposed changes to the Design System in Australia

In late 2019, the Australian Council on Intellectual Property (ACIP) called for public submissions on possible improvements to Australia's Registered Designs System. Registered designs protect the visual appearance of a product, which are distinct from patents that protect the functional aspects of novel devices, systems and processes (see our recent article "Australian Patents vs Designs: what are the differences). If the particular "look" of a product is commercially important, a registered design can offer valuable protection.

Possible Improvements

As part of the review process, ACIP identified some aspects of the designs registration process which might benefit from changes to the legislation. IP Australia (the Government agency responsible for Patents, Trade Marks and Designs) received 22 public submissions on the various options for change and has now published their response to these issues. This response will be used as a basis for draft legislation due to be released for public comment by the end of the year. As such, IP Australia's response provides a reasonable indication of some changes on the way for Australia's Design System.

Many of the proposed changes are largely administrative in nature. But some are more fundamental to the protection offered by designs and the way Applicants can use the system. Some of the key proposals are discussed below.

Design Protection for Part of a Product

Currently, design protection relates to the overall visual appearance of a product. Despite this, it is possible to emphasise certain features of a product using a Statement of Newness and Distinctiveness (SoND). This statement by the Applicant identifies one or more portions of a product as important or distinctive, and therefore to be given more weight when determining the scope of protection. It is also common to use drawings showing some features of the product in dotted lines in order to de-emphasise them.

To allow Design Registrations for only a part of a product would require a new definition of a 'design' in the legislation. IP Australia believes amending such a fundamental aspect of the legislation would necessitate a complex range of consequential changes throughout the Act and Regulations. Given that there are alternative mechanisms to highlight any "signature" features on a product, IP Australia will not introduce "partial" product design protection into the draft legislation.

Virtual, Non-Physical and "Active State" Designs

This is a reference to design protection for 'non-tangible' or transient designs such as images on a screen. This includes app icons and GUIs (Graphical User Interfaces), but also encompasses things such as new fonts (i.e. typeface) or holograms, and other types of visual projections.

Traditionally, the problem with these designs is that they are not physically applied to a specific product. They are temporary or transient displays appearing briefly on the surface of many different products (and in the case of holograms not on any product). IP Australia has therefore backed away from any changes to the legislation that would allow enforcement of virtual designs. However, it is worth noting that IP Australia will, and does, accept and register virtual designs. But the catch is that a registered design cannot be enforced against a competitor until it is "Certified" (i.e. examined). At this stage, the Designs Office is likely to object to the screen icon or GUI as not being within the definition of "a design" applied to a product.

"Grace Period" to file Design after Public Disclosure

A valid design registration must be "new", meaning that the design application needs to be filed prior to public disclosure. A "grace period" would allow designers who inadvertently publish their designs to still receive valid design protection. Submissions were taken on whether the grace period should be six or 12 months, and whether this should be immediately preceding the filing date of the Australian design, or the first design application anywhere. IP Australia has opted for a period of 12 months prior to the first design application (filedlocally or overseas).

Deferred Publication of Designs

Currently, a design gets published by IP Australia upon registration. However, some designers prefer to keep designs confidential until they launch the products on the market. This deferred publication option is available in other countries, and this proposed change has received strong support from the public submissions.

In Australia, designs proceed to registration relatively quickly and this early publication has been a disincentive for some designers, usually in the automotive industry. Some Applicants deliberately include a technical deficiency into their applications to trigger a Formalities Notice and thereby delay registration/publication by a few months.

Whilst IP Australia has some concerns that delaying publication of a design will create uncertainty for others in the market, they have agreed to add provisions for automatic registration (and hence publication) after six months from filing the application.

Draft Legislation

It is pleasing to see that IP Australia has supported several of the proposed changes that were strongly endorsed by the public submissions. If Registered Designs are more relevant and accessible to designers, companies will be more likely to use the design system to better protect their products. However, as with all legislation, the devil is in the detail and we await IP Australia's draft Bill to get a clearer picture of the new provisions.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.