Registered design services in Australia
A registered design protects the way a product looks: its shape, configuration, pattern and ornamentation. It's the right that stops a competitor putting out something that looks like yours, and for a lot of simple consumer products it can be an extremely powerful and cost-effective form of protection.
Feel free to get in touch if you've designed something and you're heading towards launch. Preparing and filing design applications is a core skill of patent attorneys and I'd be pleased to talk through how to best proceed.
“Warren was engaged to file a design registration for Australia. He was fantastic to work with. Warren is very knowledgeable and has a thorough understanding of the process. He was very patient and provided great guidance well beyond the scope. I would have no hesitations in working with Warren again."
- Nik Lee
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
Where should you start?
You're not sure whether you need a design or a patent.
A design protects how the product looks and a patent protects how it works. The answer is sometimes both, and the two have different pros and cons, costs and processes.
→ Designs or patentsYou've designed a product and haven't filed anything.
File before the trade show, the crowdfunding page or the online store. While Australia has a 12-month grace period, this should be a last resort, not plan A.
→ Design registration
What a registered design protects
A design is the overall appearance of a product resulting from one or more visual features, including shape, configuration, pattern and ornamentation.
A few things follow from that.
It attaches to a product. Designs protect the appearance of a physical article, so a floor plan, a method or a business idea can't be registered as a design.
The look doesn't have to be decorative. A purely functional shape can be registered as long as it's visually distinguishable from what came before. Plenty of good design registrations cover products that wouldn’t necessarily be described as beautiful.
It's the overall impression that counts. Both registrability and infringement turn on whether two designs are substantially similar in overall impression to a person familiar with products of that kind. Changing one feature and keeping the rest doesn't necessarily put a competitor in the clear.
It has to be new and distinctive compared with the prior art base as it stood before your priority date. New means not identical to something already out there, and distinctive means not substantially similar in overall impression. The assessment is more qualitative than quantitative, and asking “what percentage change can I make” misses the point entirely.
What it doesn't protect
A registered design won't explicitly cover how your invention works, which is patent territory, and it won't cover your brand name or logo, which is trademark territory. → Designs or patents
Plenty of products are worth protecting with more than one right. A new appliance might carry a patent on the mechanism, a design on the housing and a trademark on the name.
How registration works in Australia
Filing. You submit representations of the design, usually formal black and white line drawings, and identify the product. The representations define what you own and are crucial to get right from the outset.
A formalities check, then registration. IP Australia checks that the application is in order rather than assessing whether the design is new or distinctive. Registration usually takes a few months.
Certification, when you need it. If you need to enforce your design, you must first file a request to have IP Australia examine your design. Only after passing examination can you enforce your design right.
Renewal at five years, once only, taking you to a maximum term of ten years.
What it costs
IP Australia's official fees are modest by comparison with patents. At the time of writing:
$200 to file and register the first design
$150 for each additional design in the same application
$500 to request examination, which is what leads to certification
$400 to renew at the five-year mark
My fees vary with the complexity of the design, but rest assured I provide fixed fee quotes upfront for your approval first.
Filing several designs in one application is often worth doing where you have a product family or a few variants of the same idea, since each additional design costs less than the first.
Frequently asked questions
How long does a registered design last in Australia?
Five years from the filing date, renewable once for a further five, so ten years at most.
Is my registered design enforceable?
Only once it's been certified. Registration establishes the right, and certification is the step that makes it enforceable. Either you or a third party can request the examination that leads to certification.
Can I register a design if I've already launched the product?
Possibly. In Australia, a 12-month grace period covers your own publication or use of the design. There are certain risks and limits which the design registration page sets out.
Do I need a design or a patent?
A design protects appearance and a patent protects functionality. If the “special sauce” is in how the product looks, a design is the place to start. Many products justify both.
Does an Australian registered design protect me overseas?
No. Design rights are territorial and each country needs its own application. You generally have six months from your Australian filing to claim priority elsewhere.
Can I register several designs at once?
Yes. Multiple designs can go into a single application, which is efficient where you have a product family or several variants. Official fees are lower for each design after the first.
Protecting how your product looks
If you've designed something and you're heading towards launch, the useful conversation happens before the product is out in the world. Feel free to get in touch.