Limited options for simple mechanical devices

There are up to 160 million patent documents available for public inspection (Espacenet). The extent of such prior art limits the scope of protection available for aspiring patentees. An invention must be novel and involve an inventive step on the earliest filing date of a patent application covering the invention. These requirements are assessed against the prior art and are common to most jurisdictions.

Unfortunately, for innovators that develop relatively simple mechanical products, patent protection is becoming harder to secure as the prior art base grows. WIPO’s Patentscope database alone, for example, held 51 million patent documents five years ago; it now holds about 128 million.

A registered design can be an effective way of protecting products with a functionality that is dictated by their appearance. This article offers guidance on whether to file a patent application, an application for design registration, or both.

Understanding their natures

A patent confers a monopoly in a technical solution to a particular problem for 20 years from the filing date. A registered design (if certified) confers a monopoly in the visual appearance of a product for 10 years from the filing date.

A monopoly in the visual appearance of the product can extend to technical features that rely on the shape and/or configuration of the product. For example, a unique functional aspect of a mechanical assembly may rely on the profile of an extruded component of the assembly. Examples can be found in window frame assemblies, drainage assemblies, and other relatively simple mechanical systems. A registered design can protect the profile of the extruded component and, by extension, the mechanical assembly. Infringement often takes the form of obtaining a product and sending that product to a manufacturer for replication. After all, the difficult design work is already done. In such cases, a registered design can be useful to stop or discourage such infringement.

The filing documentation

The filing of a patent application requires the drafting of a patent specification that should be carried out by a registered patent attorney. The patent specification includes a technical description, and a set of claims that define the invention. The technical description must be sufficient to allow a person of ordinary skill in the relevant field to put the invention into practice. Therefore, a patent specification can be complex and expensive to have prepared.

On the other hand, an application for a registered design contains representations of the product to which the design is applied, and a technical description is not permitted. The protection afforded by a design registration is limited to the visual appearance of the product to which the design is applied, as shown in the representations. See this post for information regarding the drawings required for a design registration.

As a result, an application for design registration is significantly cheaper than a patent application because it is not necessary for a patent attorney to prepare a technical description and claims.

Post-filing procedure

Australian design registration is typically completed within 4 to 6 weeks of filing, provided formalities are met.  In contrast, an Australian patent application initiates a process that can take 2 to 3 years before a patent is granted — often longer overseas — with no guarantee of success, though options exist to expedite the Australian process.

Registration of a design does not automatically create enforceable rights. The owner must request examination of the registered design, and the registered design must be certified before the design can be enforced. Certification can take place at any point during the life of the registered design. Thus, the owner has the flexibility of timing because they can choose when (or whether) to seek certification. In contrast, a patent application must be examined and accepted after it has been filed, or it will lapse.

Scope of protection

The scope of protection afforded by a certified registered design is limited to the appearance of a product as shown in the drawings of the registered design. Thus, a third party can avoid infringement by producing something that is not identical, or substantially similar in overall impression, to that appearance.

In contrast, the scope of protection afforded by a granted patent is defined by the wording of its claims. Therefore, that scope can be considerably broader than the scope of a registered design. This is one of the reasons why patents take so much longer to be granted.

Duration

A registered design has a life of 10 years from the filing date. One renewal fee is payable on the fifth anniversary of the filing date.

A patent has a life of 20 years from the filing date. Renewal fees are payable annually starting from the fourth anniversary of the filing date.

Practical enforcement issues

Generally, it is a requirement for an owner of registered intellectual property to obtain a formal infringement opinion before an enforcement process can begin.

In the case of a registered design, this can be as straightforward as the owner or any other “informed user” comparing the allegedly infringing product with the drawings of the registered design and making an assessment as to whether they are either identical or substantially similar in overall impression, to use the legal terminology.

On the other hand, a formal patent infringement opinion can be both time-consuming and expensive. In cases where litigation is seriously contemplated, it is usually necessary for an expert to provide an opinion. This can add to the costs incurred before sending out the necessary cease-and-desist letter.

The opinion is only the start of proceedings. It follows that, given the different natures of a registered design and a patent, establishing a case for patent infringement is usually significantly more expensive than establishing a case for infringement of a registered design.

Belts and braces

Filing one or more applications for design registration together with the patent application can be a useful backup in case a patent is not granted. This strategy will incur additional expenses, but it is an option when there is doubt as to whether the patent will be granted.

The owner will have the capacity to enforce both a registered design and a granted patent if they are successful with obtaining a granted patent and a certified registered design. This can deter potential infringers who may find themselves facing enforcement of both a registered design and a patent.

A final word

We always recommend a rigorous due diligence exercise before filing a patent application. One or more registered designs should be considered if the results of that exercise indicate a risk that a patent will not be granted.