Australia’s legislation for registered designs is the Designs Act 2003. This Act represented a fundamental change to the Designs system in Australia and was designed to address several identified deficiencies in the existing legislation. It has been essentially successful, providing stronger design rights.
In 2023 IP Australia publicly consulted on a set of proposed changes to the Designs system and has now released a summary of the feedback received.
The proposals, feedback and next steps
The proposals included:
Protect virtual designs: Introduce protection for designs with no physical form, such as graphical user interfaces or icons. This was broadly supported, with suggestions to exclude purely expressive content and ensure the definition allows for dynamic/animated designs.
Protect partial designs: Allow protection for parts of products, not just entire products. This was also broadly supported, with suggestions around the application process, use of written claims, and determining infringement.
Protect incremental improvements:
- Preliminary designs: Allow designers to file an early ‘preliminary’ design to obtain a priority date, then convert it to a ‘main’ design within 6 months. This proposal is not to be progressed due to concerns raised in the feedback, particularly around potential difficulties obtaining overseas protection.
- Post-registration linking: Allow designers to link a subsequent incremental design to an earlier registered design. This proposal was generally supported, with suggestions to limit the number of linked designs and ensure the term of protection is not unduly reduced.
Overall, IP Australia proposes to proceed with the virtual designs and partial designs proposals, with some refinements based on the feedback received. The preliminary designs proposal will not be progressed at this stage, while the post-registration linking proposal will be progressed with modifications.
IP Australia has reported the outcomes of the consultation to the Australian Government, who is considering legislation to implement the proposals. If legislation proceeds, further public consultation will likely be conducted on the specific implementation of the proposals.
Comments
Technology has unsurprisingly advanced since 2003, resulting in an explosion of what IP Australia calls virtual designs, such as graphical user interfaces, selectable icons, animations, data visualisations and so forth. The proposal to allow protection of virtual designs is a welcome modernisation of Australia’s Designs system.
The proposal documents also include discussion on a potential ability to file video files and similar media to clearly communicate and effectively protect virtual designs. If this is adopted it may be a significant development. However, those interested in obtaining overseas design protection may want to also file the more traditional static drawings, at least until other jurisdictions adopt similar approaches or fully consider the implications for claiming priority from these types of virtual design filings.
Australia has been out of step with many of its trading partners in not allowing protection for partial designs. The introduction of these will better harmonise Australia’s Design system, which should reduce some complexities for applicants filing across several jurisdictions. It will also enable designers to more easily protect their work, even if they contributed to only a small part of an overall product, as under the existing system that small part may not be viewed as sufficiently influential to the overall impression of the entire product.
The adoption of post-registration linking may also be a welcome development for many. Currently the Designs system creates uncertainty and difficulty for successful designers who develop iterations or generations of products – the ability to specifically protect the later iterations or generations is at best uncertain and at worst not possible due to the designer’s previous work. Post-registration linking may be viewed as a balance between allowing protection of incremental designs, without overly extending the term of design rights, given the objective of the Designs system to provide only limited term exclusivity.
FPA Patent Attorneys is substantial stakeholder in the Designs system, advising its clients on the filing, registration and examination of designs. Design rights are increasingly important and FPA is proud to support the efforts of IP Australia and the Australian government to improve the Designs system, including through active participation in the consultation.
