Designs

To file an application for a Registered Design, representations of the product are needed. These may be photos of the product, however, it is preferable to have black line drawings of the product.

The drawings or photos should show different views so that all the aesthetic features of the product are visible.

The drawing or photos should show the final form of the product you intend to make, sell or use. It is not generally possible to modify the appearance of the representations after the design application is filed at the Designs Office.

Shortly after the Application is filed, the Designs Office will conduct a ‘formalities examination’ to check that all documentation and other information is in order. The Design will then be ‘Registered’.

The Design is Registered for a maximum period of 10 years, subject to the payment of a ‘renewal fee’ at the 5th year.

Although “Registered’, the Registered Design is not ‘enforceable’ against an infringer, until it is ‘Certified’.

If a Registered Design is to be enforced against an infringer, it must firstly be ‘Certified’ by going through a substantive examination process.

Examination may be requested at any time. When examination is requested, the Examiner will conduct a search of to make a comparison of the product with any similar types of products which existed or which were published before the priority/filing date of the design application, to ensure that the design is new and distinctive.

Once it passes through the examination process, a ‘Certificate’ of examination is issued, and then the Certified Design may then be enforced against an infringer.

An Australian Design Registration only protects you in Australia.

If you wish to protect your Design overseas, you will need to file separate overseas Design Applications in the countries of interest.

Australia has an international agreement allowing Australian Design applicants to file Design applications within 6 months of the initial Australian Design application, while retaining the original priority date of the Australian case.

Each overseas application will go through a separate examination process according to the Design laws of the relevant country, before being registered.

A Design can only be registered to the designer(s) who created the Design, or to a person/company who has ‘entitlement’ to the Design from the designer(s).

If the Designer is an Employee, and it is within the scope of the Employees duties to ‘create’ designs, then, under common law, the Employer may automatically have ‘entitlement’ to the rights of the Design.

Effective 10 March 2022 Australia has introduced a 12 month grace period. Therefore it may be still possible to obtain a valid Design registration in Australia if you have disclosed or used your new design. Whilst the grace period may be helpful in some scenarios, reliance on the grace period should be avoided if possible. Please contact us for further information as the specific nature of the disclosure or use needs to be assessed.

The registration process can be quite quick, typically only a few weeks. This is because it is merely checked for compliance with certain ‘formalities’ before it is ‘registered’.

However, a Registered Design cannot be enforced against an infringer until it is examined and ‘Certified’.

Certification can also be quick, typically weeks or a few months, but this depends on Designs Office backlogs.

Unfortunately, Australian Designs cannot be extended for more than 10 years.

An Australian Design covers Australia only. If you wish to protect your invention in other countries, you need to file applications in the countries of interest.

Australia has international agreements allowing Australian Design applicants to file Design applications in most foreign countries within 6 months of the first Australian Design Application while retaining the original priority date.