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.
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.
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.
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.
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.
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’.
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.
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.
Types of Registration
Registration extends to nearly all conventional products. Some exclusions apply to buildings.
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.
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  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)
UI’s Registered on Database
Exploded views can be advantageous in showing an overall design.
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.
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.
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.