This year, we see the unfortunate demise of the innovation patent system. We have written a post about that here. That this is unfortunate is exacerbated by the recent amendments to the Patents Act 1990 (No. 83) as a result of the enactment of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The amendments have made it difficult for those innovators with simple mechanical devices to achieve patent protection. The innovation patent system has provided a mechanism for the protection of inventions that would not be expected to meet the “raised bar” of the amendments to the Act.
Design registration is the only other avenue for the protection of such devices. For an overview of Australian registered designs, please visit our webpage.
The Act, as it currently stands, and innovative products are an uncomfortable fit. The Act sets out that a “design”, in relation to a “product”, means the overall appearance of the product resulting from one or more visual features of the product. Subject to some provisions, section 6 of the Act defines a “product” as being a thing that is manufactured or hand made. Section 7 of the Act sets out that a “visual feature”, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product. The visual feature may, but need not, serve a functional purpose (section 7(2)). A registered design does not set out a written claim to an exclusionary right. Rather, the exclusionary right is embodied in the representations of the product filed with the application for design registration. Thus, the designer must be satisfied that the product, as it appears visually, is the product that will be commercialised. There is no extension to “workshop variations” that may serve the same function but have a different appearance. As a result, the design registration system, as it currently stands, is not a substitute for the innovation patent system that is being phased out. Ultimately, irrespective of any changes to the Act, the spirit of the legislation is to protect the visual appearance of a product as opposed to any function that the product may perform.
Nevertheless, registered designs can still be used as an effective tool for protecting products, particularly when those products lend themselves to being duplicated. For example, it is easier for an infringer to purchase a moulded product and to fabricate a die from that product than to go through the expense and effort of re-designing the product. However, there are some things that should be considered when considering design representation.
The representations of the product are critical because the rights are embodied in the representations. It is possible to file good quality photographs and an objection will not necessarily be raised if the drawings are not of a high standard. All that is required by IP Australia is that the drawings clearly show the product that embodies the design. However, we recommend that particular attention be paid to the quality of the drawings for two reasons. First, the formalities examiner is not a judge. Second, the application for registration may form the basis for foreign applications for design registration. The drawing requirements may be more stringent in foreign jurisdictions. Thus, poorly prepared drawings may result in a loss of the priority date afforded by the Australian application. Professionally prepared line drawings showing six elevational views and two three-dimensional views are ideal and are a worthwhile investment.
A one-piece product, such as an extrusion or moulding, does not usually present complications. However, one needs to proceed cautiously when the product is an assembly of two or more components. Section 6 of the Act sets out that a “product” can be a component part of a complex product if it is made separately. A product is a complex product only to the extent that it permits disassembly and reassembly. Screws, nuts and bolts, and releasable clips are examples of devices that would permit disassembly and reassembly. On the other hand, if the components are glued, welded or riveted together, then the product comprising those components is not a complex product.
It is important to consider the potential infringer when establishing a strategy. Generally, the potential infringer should be either the importer or the manufacturer of the respective components in the case of a complex product. It is often the case that complex products are assembled by the consumer. It is not ideal to have the consumer being the primary potential infringer.
Consider a range of furniture. In one case, the range may include a series of two, three and four seater sofas, each with a distinctive style of armrest. With conventional pieces, it may be necessary to file separate applications for registration to cover each size of sofa. With a modular set up, where either a one, two, three or four seater sofa or chaise lounge can be achieved with, say, three common pieces that can be assembled and disassembled, it may only be necessary to file applications for registration of designs that cover each of the three common pieces. It is these three common pieces that an infringer would duplicate rather than the final product.
There may be instances where it is simply not practical to file separate applications for registration where the product includes multiple parts. Fortunately, it is possible to seek registration of a kit. Section 6 (4) sets out that “a kit which, when assembled, is a particular product is taken to be that product”. Thus, action can be taken against an infringer who supplies a kit and the registered design covers the kit, when assembled.
IP Australia is relatively strict when it comes to the issue of multiple designs in a single application. However, if the drawings show more than one design, this is something that can be remedied. For example, it is possible to split up a design application by way of filing divisional applications to cover the separate designs. Furthermore, in some jurisdictions, it might not be necessary to file separate design applications. For example, a European Community design application can cover up to 7 designs. In the United States, there is a less stringent approach on the issue of multiple designs. It follows that it may be worthwhile to incur the cost of filing applications for multiple designs locally, considering that the same number of design applications might not be necessary in foreign jurisdictions. Understanding the requirements in foreign jurisdictions is important for developing a design protection strategy.
The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the “Bill”) was introduced into the Australian Senate on 2 December 2020 and is currently before Parliament for consideration.
Currently, public disclosures (e.g. disclosures to persons not under an obligation to keep a design secret), before filing a first application to register a design may eliminate any rights to design protection in many jurisdictions around the world. The Bill amends the Act to provide designers with a 12-month grace period to apply for design protection after publishing or using the design. Even so, the requirement of confidentiality must always be kept in mind given that many jurisdictions do not have such a 12-month grace period.
This grace period is useful given the practical need for designers to finalise a design before taking the step of filing the application for registration, given the relatively narrow scope of design protection when compared with that of patent protection. It follows that designers will still have the option of filing an application for design registration if they have made some form of public disclosure of the design prior to filing the application.
A Final Word
As with any form of intellectual property registration, the process should not take place in a vacuum. Designers should ensure that their patent attorney understands their business and the context in which the application for registration is being made. This way, the design registration can form part of an effective commercialisation strategy.