IP Australia design rights reform consultation
The DIA advocated for members to IP Australia on possible changes to the Designs Act 2003 (Cth) and the Designs (Formal Requirements for Designs Documents) Instrument 2022 as part of a consultation on reforms to enable virtual designs to be protected, to introduce protection for partial designs and to recognise the iterative nature of design.
Currently, the Australian designs system does not offer protection for non-physical or virtual designs. These are designs for non-physical products, things whose use results in the display of visual features through electronic means. This means that Australian designers working in innovative and technological fields may not be able to use design rights to protect their designs in Australia. Excluding virtual designs from protection is inconsistent with the approach taken in some other countries, which may result in a disadvantage to Australian designers and international applicants seeking protection in Australia.
IP Australia proposes to protect design innovation for parts of whole products made in one piece. This would bring Australia into line with other countries who already offer design protection for parts of whole products and improve the opportunity for designers to commercially benefit from the Australian designs system. The proposals are:
Definition of a design: Expand the definition of ‘design’ in the Designs Act to allow protection of partial designs (the overall appearance of part of a product made in one piece, such as the heel of a shoe).
Indicating the partial design: Allow visual indicators and/or written claims to indicate the part of a product that the partial design is embodied in.
Scope of protection: The scope of protection sought in a design application must be clear to the familiar person, considering the representations and any written claim. The familiar person is a person who is familiar with the design’s product or similar products.
Identifying each product: All design applications must identify each product clearly, so that the familiar person can work out its nature and intended use. A partial design application can be for more than one product, but all products must be clearly identified.
Protection requirements: Assess whether a partial design is validly registered by comparing it with earlier designs for the same or similar products.
Infringement: A partial design registered for a product will be infringed by similar products embodying the design. For example, a registered handle design for a cup would be infringed by a water jug, mug, or cup with an identical handle.
Copyright/Design overlap: Apply the existing overlap to parts of products in the same way as it applies to whole products.
The third focus of the reforms seeks to better accommodate the way that designers work. The current designs system does not address the incremental nature of developing designs. IP Australia proposes to allow designers to protect their designs as they develop their products throughout the design lifecycle. There are wo proposals for reform:
Preliminary designs: before registering the main design. The designer can file a low-cost application for a preliminary design (preliminary application) and can further develop the design for up to 6 months, before filing a main application for a design with incremental changes from the preliminary design (main design).
Post-registration linking: after registering the main design. The owner of a registered main design can link it to a subsequent design which has incremental changes to the main design. This ensures that publishing or using the main design does not make the subsequent design unprotectable.
IP Australia is also proposing changes to make aspects of the existing system simpler and clearer for all design applications.