This introduction looks at what a design registration is, what it protects, and how Patentec uses design protection to compliment patent protection rights.
What is design registration?
Design registration is used to protect any industrial or commercially used designs. The design protects the unique visual characteristics which can include the shape, configuration, pattern or ornament of a design.
Design registration is used to protect the the unique visual characteristics of industrial or commercially used designs.
These visual characteristics must be new and is distinctive, which is almost analogous to the patent eligibility requirements of novelty and inventive step.
Should you use design protection?
Whether or not you should use design protection essentially depends on what you are trying to protect. In practice, there is often an overlap between patent and a design protection because an invention may have a novel features which are both functional (so as to be eligible for patent protection) and also visually distinctive (so as to be eligible for design protection).
In such a case, we recommend going for both patent and design protection to gain complimentary IP protection in obtaining a potential causes of action for both patent infringement against those having something that works the same way and design infringement against those having something that looks the same or similar.
We recommend going for both patent and design protection to gain complimentary IP protection
However, if one were to choose patent or design protection, we recommend going for patent protection. The reason for this is that it is generally much harder to work around a patent then it is to work around a design registration. Specifically, for a well drafted patent that claims the essential features of an invention, there is absolutely no way someone could work around the patent. However, for a design registration, there is greater scope for changing the visual characteristics of the design in a workaround attempt.
Other people’s designs
Other people’s designs can be viewed on the Australian Designs Sata Searching (ADDS) database.
Having filed a patent application, you have a 12 month window in which to file foreign patent applications while deriving the benefit of the earlier filing date, known as the Paris Convention period.
You must file foreign design registrations within six months of having filed your Australian design application.
For designs however, the Paris Convention period is six months. In this regard, if you are considering foreign design registrations, you must file these design registrations within six months of having filed your Australian application.
When filing a design application, one has six months in which to decide whether to request the registration or the publication of the design.
Requesting registration as a usual step and is usually requested at the time of filing the design application. Having requested registration, your design application simply go through formalities check – in other words, it is not examined whether it meets the requirements for newness and distinctiveness.
A design application is not examined for newness and distinctiveness during registration.
Alternatively, there is a lesser utilised defensive strategy of rather requesting the publication of the design. Requesting the publication of the design does not give you any enforceable rights but stops others obtaining rights occur as having been published, the design is no longer considered new.
Having requested registration, the design is registered for five years, which can be renewed for a further five years up to a maximum of 10 years.
However, a design registration is not enforceable until such time that it has been examined or certified. Usually, this would only be undertaken were there an infringing design.
In this way, a design registration is very similar to the innovation patent certification process wherein both are granted or registered but only become enforceable once having been certified (examined).
A design registration is not enforceable until such time that it has been examined or certified
In summary, a design registration protects the visual characteristics of an industrial or commercially used design which can include the shape, configuration, pattern ornament of the design.
Patent and design protection often times overlap in which case it is recommended to obtain complimentary patent and a design protection. If one were to choose between patent and design protection, then patent protection is recommended.
If you have a new product and are not certain whether patent or design protection is appropriate, book a complimentary meeting with Patentec patent attorneys today so that we can advise on the most appropriate form of protection.