A design registration protects the way your product looks: its shape, configuration, pattern and ornamentation. Official fees start at $200, it registers in months rather than years, and for a lot of consumer products it is a very powerful and cost-effective IP right.
Get in touch if you have designed something and you are heading towards launch. Filing design applications is one of my core design services, and if the product also has a technical advance in it, I can advise on whether a patent belongs in the picture as well. Either way I'd be pleased to outline a protection strategy for your product.
Design registrations in Australia
"Warren is communicative, efficient and knowledgable. You know you are on good hands when you work with him. He gave great advice across trade mark, design registration and patent. Highly recommend working with him."
- Stella Xu
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
File before you show it to anyone
The prior art base takes in anything published or publicly used anywhere in the world before your priority date. In fact, your own disclosures can count against you.
So the things that put a design at risk are the ordinary things a business does on the way to a launch:
A stand at a trade show
A crowdfunding page
A photo of the prototype on Instagram
A product page that goes live before the shipment lands
A pitch deck circulated without a confidentiality agreement
A supplier sample sent without one either
The gold standard is to get your design application in first, and since filing a design application is relatively quick and low-cost, this is often achievable ahead of launch. The same trade show stand can cost you a patent as well as a design, so if there is a technical advance in the product it is worth understanding what counts as disclosing your invention before anything goes public.
If you have already published, read the next section before you decide it is too late.
The grace period, and why I treat it as a safety net
Australia provides a 12-month grace period which can help protect you against public disclosures of your product, provided your design application is filed within twelve months of the very first public disclosure.
While Australia’s grace period has rescued plenty of applications, there are at least two reasons you should not treat this as a plan A:
It is an Australian rule. Grace periods are a matter for each country. Indeed, some countries don’t have them at all, or they are shorter in duration, or only apply if the disclosure was without your consent. A disclosure that the Australian grace period forgives can still cost you a market you have not thought about yet, which is why you should avoid publishing before filing. If the product might warrant a patent too, note that the two systems run on separate deadlines, so clearing one does not clear the other.
Section 71A. The grace period came in with a companion provision. Somebody who began using your design before your priority date, or took definite steps towards using it, has a defence to infringement. That covers a person who copied it from your own public disclosure. So you can rely on the grace period, secure your registration, and still find that the competitor who saw your trade show stand and went into production is entitled to keep going.
The grace period is a last resort, not a plan A.
What defines what you own
The representations. These are the drawings or photographs of the product. They are the main source of information about the visual features of the design, and they have to show those features clearly and consistently across every view. What is in them is what you own. What is left out, or shown ambiguously, is often not recoverable afterwards, because section 28 does not allow an amendment to add matter that was not in substance disclosed when you filed. The representations do for a design what the specification does for a patent, and for the same reason: getting the document right is the whole job.
This is where most of the value of getting help sits. Which views to include, whether to show the product in context, line drawings or photographs, whether to hide certain features, or whether to show them in broken lines: every one of these decisions can alter scope and breadth of your protection.
The statement of newness and distinctiveness. Optional, but worth thinking about. Where you identify particular visual features as new and distinctive, section 19(2)(b) requires particular regard to be given to those features when distinctiveness is assessed. A well drawn statement points the examiner, and later a court, at the features you actually care about.
What happens after you file
You have six months from the priority date to request registration. For applications filed on or after 10 March 2022, if you do not request it, the request is deemed to have been made at the end of those six months.
A formalities check, not an examination. IP Australia checks that the application meets the formal requirements. It does not search the prior art and it does not decide whether your design is new or distinctive. That comes later, at certification, and only if you or somebody else asks for it.
IP Australia aims to issue 85% of first reports on registration requests within 8 weeks, and 95% within 9 weeks. Registration itself usually takes at least three months.
Publication happens on registration. The design stays confidential until then. If you want longer before it becomes public, deferring the registration request is the lever you have, up to the six month limit.
A certificate of registration issues and an official notice is published.
More than one design in one application
It is possible for several designs to go into a single application, and the fee structure makes it worth considering. The first design costs $200 and each additional design costs $150.
This filing strategy can suit a product family, a set of variants on the same idea, or a product together with the parts that go with it. Each design in the application is dealt with separately, so a weak one does not drag the others down with it, and each ends up as its own registration with its own number.
Frequently asked questions
How long does a registered design last?
Five years from the filing date, renewable once for a further five, so ten years at most.
Do I need drawings, or will photographs do?
Either can work, though the choice often affects your scope of protection, so be deliberate about this before filing.
What is a statement of newness and distinctiveness?
An optional statement identifying the visual features you say are new and distinctive. Where one is filed, section 19(2)(b) requires particular regard to be given to those features when distinctiveness is assessed, so a focused statement is worth more than a broad one.
Can I protect my design overseas?
Yes, though each country needs its own application, because design rights are territorial and an Australian registration covers Australia and nothing else.
You have six months from your Australian filing date to claim its priority overseas, which is half the twelve months you get for a patent. Australia is not a member of the Hague System, so there is no single international design application of the kind the PCT provides for patents. I file overseas designs through associates, so you deal with me throughout.
Launching soon?
Send me photos or drawings of what you have made and tell me when you plan to go public with it. I can come back to you with a protection strategy and quote for you to think about.