Overview
A design registration protects the visual appearance of a product.
Unlike a patent, there is no requirement that a design registration is inventive. For this reason a design registration can be a very effective form of protection. It is quite common for a design application and a patent application to be filed at the same time.
Requirements
In Australia, a design registration must be new and distinctive. If a design exists in a relatively cluttered field, then relatively small differences may be sufficient to provide the design with distinctiveness.
Most countries, including Australia, examine design applications with regard to disclosures and publications on a worldwide basis.
Grace Period
In Australia, a design application should be filed before the design is disclosed to a member of the public in non-confidential circumstances. As of 10 March 2022, a twelve (12) month grace period will apply for prior disclosures. The prior use must occur on or after 10 March 2022 to obtain the benefit of the grace period.
The 12 month grace period applies to relevant entities and persons or bodies that derived or obtained the design from a relevant entity. Relevant entities include the owner, predecessors in title and the creator of the design. Importantly, publications by a Patent or Designs Office are excluded.
In addition to the 12 month grace period, section 18 of the Designs Act 2003 might provide for some disclosure in certain circumstances. (https://manuals.ipaustralia.gov.au/design/d07.6-copyright-overlap—s.19#d07.6.1-introduction; https://www.ipaustralia.gov.au/sites/default/files/options-paper-for-the-review-of-the-designs-system.pdf#page=34).
The US and Europe also provide a twelve-month grace period for prior disclosures.
Examination
In Australia, examination of a design is optional and may be requested by the applicant or a third party.
A design cannot be enforced unless the design has been examined and certified.
Copyright/Design Overlap
The Copyright Act seeks, in several instances, to remove any copyright where a design is: (i) industrially applied; and (ii) could be registered under the Designs Act.
Generally, if you wish to industrially apply your design then filing a design application is a means of retaining protection for period of 10 years. The Designs Office (IPAustralia) provides a short summary of considerations at https://www.ipaustralia.gov.au/about-us/news-and-community/blog/protect-your-creativity-design-rights-versus-copyright.
Copyright/design overlap is a complicated area of Australian law.
Function
By legislation, the fact that a visual feature of a design has a functional purpose is not relevant to whether the design is able to be registered.
In practice, however, functional designs may be difficult to proceed to registration. In the Australian Examiners’ Manual it is noted that ‘features of a design that do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform, and which are consistent with a variety of particular shapes in articles copying those features, are not amenable to protection’.
Infringement Defence
As of 10 March 2022, there will be an infringement defence for uses before the priority of a registered design. The infringement defence generally requires definite steps to have been taken before the priority date of the registered design. Temporary stoppages also fall within the scope of the infringement defence.
Term of Protection
When a design application is filed in Australia, 6 months of provisional design protection is provided in all convention countries.
The term of protection in Australia for a design registration is ten years. A single renewal fee is payable after five years.
Overseas Applications
It is possible to file a design application in a convention country up to six months after first filing a design application in Australia. Further information is available on request.
There is no such thing as a worldwide design registration.
Conventional Products
Types of Registration
Registration extends to nearly all conventional products. Some exclusions apply to buildings.
Representations
The number of representations that are required to show a design will depend on the complexity of the design.
The following representations are recommended:
i) perspective view; ii) front view; iii) rear view; iv) first side view; v) other side view; vi) top view; and vii) bottom view.
Generally, it is advisable to file a perspective view and six orthographic projections. The features of a rear view can be disclaimed with broken lines if considered advisable. Exploded and sectional views can also be included to show further features and remove ambiguity.
Notably the maximum number of views taken into account in a European community design application is seven.
It is advisable to file formal line drawings to maintain a relatively broad scope of protection.
Newness and Distinctiveness
Filing a specific statement of newness and distinctiveness is often useful.
User Interfaces
Types of Registration
User-interface (UI) type designs have found popular renown in the line of Apple v Samsung cases.
In Australia there is a view that the Australian design system does not allow for the valid protection of user-interface type designs.
The Australian Law Reform Commission’s Report noted that: “in the Commission’s view, a screen display is a use of a product rather than a product”. There have been decisions in which user-interface type designs have been refused on this basis (See Altoweb (2002) 55 IPR 656; and Apple Inc [2017] ADO 6).
Nonetheless there are many user-interface type designs registered in Australia (see below). Notably, however, we have only been able to locate a few certified designs entitled ‘Display screen with graphical user interface’. It would seem that this is the best approach in Australia noting, however, that the validity of a design in this area cannot be guaranteed.
Before registration, a formalities check is performed without substantive examination. For this reason, applicants continue to file user interface design applications without requesting certification. If certification is not requested these ‘registrations’ will remain on the register for up to 10 years. At the present time no enforcement of these registered designs seems to be possible.
An issues paper has tabled the topic for further consideration.
Reading Links – Software (2014)
1. FUNCTIONALITY AND GRAPHICAL USER INTERFACE DESIGN PATENTS; Michael Risch; 17 STAN. TECH. L. REV. 53 (2013)
2. How To Protect UI with Design Patents (Bressler Group)
3. Strong Design Patents: The Power of The Broken Line (IPWatchDog)
Examples
Mechanical
UI
UI’s Registered on Database
Exploded views can be advantageous in showing an overall design.
(USPTO manual)
Sectional views may be necessary when claiming an overall design. If a feature is hidden from view then the feature may not constitute a ‘visual feature’.
In Australia, the ALRC report referred to features being capable of design protection even if hidden by a casing. The Australian Designs manual notes however ‘where the internal appearance does not become apparent during normal use, (for example – the internal construction of a sealed lead-acid battery) the internal appearance cannot contribute to the ‘overall impression’ gained by the informed user. That is, such internal visual features cannot give rise to distinctiveness.‘
A statement of newness or distinctiveness could refer to the possible transparency of the product. Views showing transparency could also be included. For the US, elements visible behind transparent surfaces should be shown in light, full lines, not broken lines.
Embodiments
In order to cover a number of embodiments it may be advisable to file more than one application.
At the cost of complexity it may also be possible to combine multiple designs into a single application. Each embodiment should be clearly identified as a separate design.
Generally there is no official fee cost benefit.
Surface Shading
It is common practice for applications filed in Australia and other convention countries to be filed in the United States within 6 months after filing in the convention country.
In the US surface shading is required for some designs. US Patent Attorneys will generally engage draftsman familiar with patent drawings to add surface shading.
The USPTO designs manual provides some guidance on the types of shading (See https://www.uspto.gov/patents/basics/types-patent-applications/design-patent-application-guide).
Stippling is an alternative to shading, as are curvature lines. Generally groups of curvature lines should follow a set direction that accords with contour. Discrepancies can generally be resolved by comparing orthographic views.
US Registered Design Examples
https://patents.google.com/patent/USD838187S1
(Note: Surface shading is generally required in the US.)
Statement of Newness and Distinctiveness
In Australia, there are various considerations involved with a statement of newness and distinctiveness. For example: https://manuals.ipaustralia.gov.au/design/d04.6-role-of-a-statement-of-newness-and-distinctiveness.
The ALRC also provides some guidance.
It is possible to file designs with indefinite length. When filing a convention application from the United States in Australia, it is possible to clearly note that shading lines are not pattern or ornamentation and are not limiting.
A number of examples are provided below (possibly uncertified). The statements of newness and distinctiveness shown may not be appropriate and are provided merely as examples of some filed statements.
Examples
Monopoly resides in the shape and/or configuration of an extrusion for a skylight window frame of constant cross section and indefinite length as illustrated in the representations.
Newness and distinctiveness resides in the features of shape and configuration of the extrusion for a draft seal of constant cross-section and indefinite length as shown in the attached representations.
Newness and distinctiveness reside in the shape and configuration of a planter box as shown in the representations. The planter box has its two opposite ends composed of multiple horizontal slats, and its two opposite sides composed of corrugated sheet extending between the ends as shown in the representations. The length and height of the planter box are of indefinite dimension but of constant cross section throughout that dimension. The width of the planter box is constant.
Newness and distinctiveness of the design resides in the features of shape and configuration of the butter stick of indefinite height as shown in solid lines in the accompanying representations. The portions bounded by dot-dash lines indicate unclaimed surfaces.
The shape, configuration, ornamentation and color of the product as shown in the accompanying figures is new and distinctive.
The features of shape and configuration of the lighting assembly as shown in the representations accompanying this application are new and distinctive. The newness and distinctiveness of the lighting assembly resides in the shape and configuration of a vehicle lamp or combination lamp assembly consisting of a single mounting base incorporating a combination of 5 lenses as illustrated in the accompanying representations. The ornamentation of the color applied to the surface of the mounting base and lenses are to be disregarded in determining the newness and distinctiveness of the visual features of shape and configuration and the monopoly of the design as the coloring is merely used to convey the distinction between the lenses and base of the lighting assembly in the accompanying representations.
Newness and distinctiveness resides in the visual features, including the shape and configuration of the product as shown by means of solid lines in the representations. The shading lines shown in figures 1 and 2 do not form part of the design.
The newness and distinctiveness of the design resides in the shape and/or configuration of a pouch as shown in the continuous lines in the representations. The shading and features shown in broken lines are for context and example only, and should be disregarded for the purpose of assessing newness and distinctiveness and the overall impression of the design.
Generally when amending a design application before registration, the only limitation is that the amendment must not alter the scope of the application by the inclusion of new matter. After registration it is not possible to amend a statement of newness and distinctiveness. After registration it is not possible to increase the scope of registration. Filing complex statements should be carefully considered.
Reference to shape and configuration is not required. Furthermore terms such as ‘and/or‘ may introduce confusion. The Examiner’s manual notes ‘in such situations, the design might be anticipated by a product having the same features of shape but a different configuration, or the same features of configuration but with a different shape (as well as a product having the same features of shape AND configuration).‘
The Examiner’s manual also notes that ‘Sometimes statements are provided in the following form: Newness & distinctiveness resides in the features of shape & configuration of the product as shown in the representations. The intention of such statements is to make clear that the visual features of the design are limited to features of shape and configuration – irrespective of any pattern or ornamentation that might be applied to a product bearing the design. Such statements may be intended to ensure that in infringement proceedings, infringement of a design based on shape and configuration is not avoided merely by having the product bearing a particular colour or some ornamentation. However it correspondingly ensures that any citation that has the relevant shape and configuration cannot be distinguished on the basis of its pattern or ornamentation (or any other visual feature).‘
As noted above, a statement of newness and distinctiveness cannot be amended after registration.
Newness and distinctiveness is claimed in the features of shape and/or configuration of the monitor connector represented in solid lines in the attached drawings. In assessing newness and distinctiveness, no regard should be had of the shape and configuration of cable end represented in broken lines.
Newness and distinctiveness is claimed in the visual features shown in solid lines in the representations. The ornamental design which is claimed is shown in solid lines in the drawings. The broken lines in the drawings are for illustrative purposes only and form no part of the claimed design. Broken lines formed by equal length dashes show unclaimed portions of the design. Broken lines formed of unequal length dashes (ie.. dash-dot) show boundaries between claimed and unclaimed portions of the design. Lines having a jagged element (ie. broken-away symbols) are not part of the claimed design and show that no particular length of the portion is claimed. It is contemplated that any illustrated solid lines (or portions thereof) may be converted to broken lines and that any illustrated broken lines (or portions thereof) may be converted to solid lines so as to claim or disclaim portions, components, or sub-components of the designs shown.
Priority and Ownership
There is a six-month priority period in Australia. Registration must be requested within this period.
Before registration, the applicant need not be the registered owner. The applicant must be the owner of the design at the time of registration.
Registration must be requested within six months of priority. Certified copies of any priority documents are not required unless requested by the Patent Office.
Right of Repair
There is a right of repair defence in Australia.
At the time of writing, a number of relevant considerations are detailed in GM Technology Operations LLC v SSS Auto parts Pty Ltd (2019) 139 IPR 199.
Design Links
IP Australia: Australian Patent Office
http://www.ipaustralia.gov.au/
The Australian Patent Office website provides information on Australian designs. The website provides access to the designs database. The design database can be searched by owner, article and date.
OHIM: Office for Harmonization in the Internal Market
OHIM is the official trade marks and designs registration office of the European Union. The OHIM website provides information on the Registered Community Design (RCD) covering 27 member states of the European Union.
USPTO: US Patent Office
The United States Patent Office website provides information on US design (design patents). The website allows searching of the US patents database.
Wikipedia: Designs
http://en.wikipedia.org/wiki/Design_patent
The Wikipedia section on design provides some useful information on designs. In The US designs are referred to as ‘design patents’.
*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.