Designing Applications: Tips for filing design applications in Australia

Date: 2014-11-17
Author: Daneta Crump

On average 6000 design applications are filed each year in Australia, with over 90% of these applications proceeding to registration. With the optional post-registration examination of the current system, less than 20% of all registrations are examined and certified as being valid1. This can be contrasted with the regime under the Designs Act 1906 (Cth) (repealed) (Old Act) where all registrations were thoroughly scrutinised during examination.

This new process means that despite an increase in design application filings since the commencement of the Designs Act 2003 (Cth) (Designs Act), practitioners experience less design prosecution. When this is combined with the relative youth of the Designs Act and the resulting scarcity of Designs Office and Court decisions, practitioners have little guidance from which to develop strong filing practices. Practitioners are therefore still finding their way through some aspects the Designs Act and Regulations by application of theory, collaboration with the Designs Office and dead reckoning. To make matters worse, given the current review by ACIP2, as discussed in the August edition3, by the time relevant case law is available, the law may change again.

This article discusses some points to consider when preparing an application and tips for filing design applications.

The full article is linked below and covers the following questions:

  • Has there been prior disclosure?

  • Will you receive a Formalities Notice?

  • What is your ability to amend?

  • What is the product?

  • Is there more than one design or product?

    • More than one design?
    • A common design?
  • Are the representations appropriate?

    • What views should be included?
    • Should the representations be in colour?
    • What drafting elements have been used?
    • Have broken lines been used?
    • Practical issues
  • Should a statement of newness and distinctiveness be included?

There is no “one size fits all” approach to design applications and until more Court decisions issue care must be given to assessing the most appropriate way for products to be protected whilst navigating the complexity of the Designs Act and Regulations.

Download Publication (PDF)

1  ACIP (Advisory Council on Intellectual Property) Review of the Designs System: Issues Paper September 2013, available at www.acip.gov.au
2  Above n 1.
3  2014 Vol 27 No 2 August edition of IP Bulletin, Opening 'Pandora's Box': ACIP's review of the Australian designs system by Victoria Bell, Baker & McKenzie.