Designs

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.

In Australia, there is a 12-month grace period for filing an application for registration of a design if publication or use of that design commenced on or after 10 March 2022. Some countries, such as the U.S., also have a 12-month grace period. However, any party taking definite steps to copy the design during the grace period may have intervening rights and be protected against any infringement proceedings.

The protection afforded by a registered design depends, in large part, on the representations filed together with the application. Therefore, it is recommended that high quality, realistic representations be filed in support of the application.

Good quality line drawings, without shading except that necessary to show contours or curves, are preferable. In some cases, digital photographs or 3D modelling software can be used provided the representations show the design clearly. The photographs should be in black and white and should be of high resolution. Usually, good quality photographs taken with a modern mobile phone will suffice.

The application for the registration of a design can establish a priority date for applications for design registration overseas. The priority date is the relevant date for assessing the registrability of the invention. Any material that was publicly available before the priority date can be considered by an examiner during examination of a later filed application for registration.

Further applications for design registration must be filed within 6 months of the earliest priority date to claim the benefit of the priority date.

An application for registration of a design is only examined for compliance with formalities. This includes such formalities as suitable representations, the name of the product to which the design is to applied and unity of design. The application will proceed to registration if the formalities are met, without an examination as to whether the design complies with the substantive requirements of newness and distinctiveness.

However, the registration will need to be examined for compliance with substantive statutory requirements and a certificate issued before it can be enforced.

A design registration is renewable once within 5 years of the filing date. Renewal provides a further 5 years of registration for the remainder of the 10 year life of the registered design.