A registered design protects the way a product looks. A patent protects the way it works.
Plenty of products justify both, and the two rights have different pros and cons and filing mechanisms so the decision is better made sooner rather than later.
Let me know what you’ve made so we can decide whether design or patent protection (or both) would best protect your product:
Registered design or patent?
“Warren was an absolute delight to work with. His ability to understand complex designs is outstanding. Not sure what the best part was, his professionalism, depth of knowledge, ease of engagement or just all round hassle free dealings with.”
- Marcus Walker
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
What each right actually covers
A registered design covers the overall appearance of a product: its shape, configuration, pattern and ornamentation. It doesn’t matter whether the appearance is decorative or purely functional, as long as it is new and distinctive compared with what came before. What it will not do is stop somebody achieving the same technical result with a different look.
A standard patent covers an invention that is new, inventive and useful. It can protect the underlying concept or idea as defined in the patent claims, so a third party who reaches the same result by a different route can still infringe. That is what makes a patent the stronger right where the value sits in how something works.
If in doubt, imagine a competitor wants to sell a competing product. If they could eat into your marketshare by making something that looks like your product, protect the appearance. If they have to copy the way it works, protect the function. If either route could hurt you, protect both.
Cost, speed and term
Designs are cheap and fast. Official fees start at $200. Registration often takes a few months. The maximum term in Australia is ten years, and is often longer overseas
→ Design services
Patents are neither. They generally cost more at every stage and the process can span years before a patent is granted. That said, the term is up to 20 years, and the scope is defined by claims rather than by pictures.
→ Patent services
How examination differs
Examination of a patent application must be requested. A patent application can’t just sit there, published and pending forever. Examination of the application must be requested, often upon IP Australia’s direction, and you’ll need to ensure your claimed invention holds up against any cited prior art.
Examination of a design is optional. After filing, IP Australia simply carries out a formalities check and puts the design on the register without searching anything. If you want enforceable rights, you need to first request and pass examination before you can bring infringement proceedings on a third party.
When the answer is both
Many products are protected by both design and patent protection.
Take a new kitchen appliance. An underlying mechanism might be patented. The appearance of the external housing might be covered by a registered design. And of course the brand of the appliance would be trademarked. Each right stops a different competitor doing a different thing, and none of them substitutes for the others.
The case for filing for both patent and design protection is strongest when the product has a distinctive look and a technical advantage.
The case against is usually budget, and that is a fair answer. Where you have to pick one, pick the one that maps onto how a competitor would most readily copy you.
Timing
The priority period is 12 months for patents and six months for designs. Both run from the corresponding priority date.
A patent application publishes. A complete patent application publishes at around 18 months from the earliest priority date, whether it’s a standard or a PCT application. The publication includes any drawings in the patent application. If those drawings show the appearance of your product, that publication sits in the prior art base against any subsequently filed design application.
A provisional patent application does not publish. Filing a provisional does not necessarily put your design at risk. It is the 12 month point, when you move to standard or PCT applications, that starts the clock towards publication.
The clean approach, where both rights are wanted, is to file the design at the same time as the patent application.
Frequently asked questions
What is the difference between a registered design and a patent?
A registered design protects the way a product looks: its shape, configuration, pattern and ornamentation. A patent protects how something works.
Is there such a thing as a design patent in Australia?
No. The term "design patent" comes from the United States. In Australia the equivalent right is a registered design under the Designs Act 2003, and it is a separate system from patents entirely.
Can I have a design and a patent on the same product?
Yes, and for many products it is the sensible answer. The patent covers the functionality and the design covers the appearance. Where both are wanted, the usual approach is to file them together, because a published patent application can become prior art against a later design application, and vice versa.
Which is cheaper, a design or a patent?
A design, by a wide margin. Official fees for a design start at $200 and registration takes months. A patent generally costs more at every stage and the application process typically runs for years before grant.
How long does each right last?
A registered Australian design lasts five years from filing and can be renewed once, to a maximum of ten. A standard patent lasts up to twenty years from the filing date of the complete application. A trademark can be renewed indefinitely.
I have already shown my product publicly. Can I still protect my product?
Maybe. Australia has a 12-month grace period for design and patent protection. Most countries aren’t so generous so it’s worth getting this sorted as soon as possible.
Not sure which one you need?
Show me the product, or any drawings if it is not made yet, and I can advise on whether patent and/or design protection are recommended.