Our highly experienced design registration team are based in both Sydney and Melbourne, and can help you with filing, registration, examination and foreign protection services
This is the first step in the application procedure. Securing the earliest possible filing date is important, as this is the date used to determine if your design is new and distinctive. That means that publication by you, or anyone else, after this date will not affect the validity of the design registration.
If you have already filed an application for design registration (or design patent) overseas, an Australian application may use the filing date of the foreign application as its priority date if your Australian application is filed within six months of the foreign application.
Instead of design registration, you can also choose to have the design published. Publication of a design does not give you any rights as its owner, but by putting the design on the public record it prevents anyone else from obtaining design rights for an identical or substantially similar design.
After filing, a design application undergoes a formalities check, and if it’s successful the design is registered. There is no substantive examination of design applications before registration in Australia.
If the formalities check is not successful, the Designs Office will issue a ‘formalities report’. You must rectify all deficiencies in the application within two months of the issuance of the first formalities report, or the application will lapse.
Examination of a registered design is optional in Australia, but a design registration is not enforceable until it is examined and certified by the Designs Office.
You may request examination at any time after the design has been registered. Third parties can also request examination and lodge prior art material at any time after registration of a design.
During examination an examiner reviews your registered design and may conduct a search to check whether the registered design is new and distinctive. You will have an opportunity to overcome any objections raised by the examiner by argument and/or amendment of the registered design. This process must be completed within six months of the issuance of the first examination report.
You can request examination of a registered design more than once. This may be necessary if a third party requests examination of an already certified registration on the basis of new prior art.
If the examiner is satisfied that there are no grounds of invalidity, you will receive a certificate of examination and can enforce your certified registration. Alternatively, if the examiner’s objections cannot be overcome the registration is revoked.
There are similar systems for protecting designs in many other countries. In most countries, an application made within six months of an Australian application can use the Australian filing date. Or, if a foreign application is made first, an Australian application made within six months can use the foreign filing date.
Our attorneys regularly handle advice on overseas design filing for local clients.