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, costs, and processes so the decision is better made sooner rather than later.
Feel free to show me what you’ve made so we can decide whether design or patent protection (or both) might be warranted:
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 does not 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. → Design registration
A standard patent covers an invention that is new, inventive and useful. It protects the idea at the level the claims define it, so a competitor 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. → Standard patent applications
The practical test I use is simple. Picture a competitor who has seen your product and wants your customers. If they can win by making something that looks like yours, protect the appearance. If they have to copy the way it works, protect the function. If either route would hurt you, protect both.
Cost, speed and term
Designs are cheap and fast. Official fees start at $200. Registration usually takes at least three months and happens automatically at six months from the priority date if you do nothing. The maximum term is ten years, made up of five years plus a single renewal, and there is no third term. → Design services
Patents are neither. They cost more at every stage, examination can be requested up to five years from filing, and the process routinely runs for years before a patent is granted. In exchange the term is up to twenty years, and the scope is defined by claims rather than by pictures. → Patent services
That difference in cost and speed is the real reason designs are underused. A design registration is often affordable at a stage in a business where a patent is not, and it is on the register while the patent application is still years from grant.
How enforcement differs
A patent is examined before it is granted. By the time you hold a granted patent, IP Australia has searched the prior art and formed a view. The right is enforceable from grant.
A registered design is not examined before it is registered. IP Australia carries out a formalities check and puts the design on the register without searching anything. Infringement proceedings cannot be brought until the design has passed examination and been certified. Examination is a separate step, with its own fee, and it can be requested by you or by anybody else.
So a registered design is quick to obtain and a further step away from being usable. Worth knowing before you rely on the registration certificate in a negotiation.
When the answer is both
A great many products carry more than one right, because they present more than one target.
Take a new kitchen appliance. The mechanism inside it is patentable. The housing has an appearance worth registering. The name on the box is a trade mark. Each right stops a different competitor doing a different thing, and none of them substitutes for the others.
The case for filing both is strongest when:
The product has a distinctive look and a technical advance
You are selling into a market where copying is fast and litigation is slow
The patent is going to take years and you need something enforceable sooner
The invention might turn out to be obvious, and the appearance is a fallback worth having
You are raising money, and two rights read better in a data room than one
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 actually attack you.
The timing that catches people out
The overseas priority period is twelve months for patents and six months for designs. Both run from your first filing. Anyone who has been through a patent process once tends to assume they have a year to decide about overseas protection, and for designs they have half of that.
A patent application publishes. A standard application publishes at eighteen months from the earliest priority date, and a PCT application publishes at the same point. Once it is published, the drawings in it are public. If those drawings show the appearance of your product, that publication sits in the prior art base against a design application filed afterwards.
A provisional patent application does not publish. Filing a provisional does not necessarily put your design at risk. It is the twelve 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 rather than waiting to see how the patent goes.
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. A competitor who achieves the same function with a different appearance does not infringe your design, and a competitor who copies your appearance without the mechanism does not infringe your patent.
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 typically runs for years before grant, though it lasts up to twenty years against a design's maximum of ten (in Australia).
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 designs, for disclosures on or after 10 March 2022, and a 12-month grace period for patents as well. 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 the drawings if it is not made yet, and tell me whether anything has been shown publicly. I can advise on what rights are available and which I would actually spend money on.