In mid-2023, IP Australia sought public comments on proposals to expand the Australian registered designs system to allow for the protection of virtual designs, partial designs and incremental designs. A link to our earlier article discussing these proposed changes is provided here.
Thirty-six (36) submissions were received by IP Australia from a range of stakeholders, including Australian and overseas designers, Australian and overseas attorneys/lawyers, academics and industry representatives. IP Australia also conducted a number of interviews with a wide range of stakeholders during the consultation period.
IP Australia has since reported the outcomes (Enhancing Australian Design Protection) of the consultation to the Australian Government, and the Government is considering legislation.
Virtual Designs
Unlike many overseas jurisdictions including the US and Europe, the Australia’s design system doesn’t currently provide enforceable protection for virtual designs such as graphical user interfaces and icons.
At least in part because of broad support by stakeholders, IP Australia now proposes to proceed with expanding the designs system to allow for the protection of virtual designs. This will be pleasing news for many of our clients.
Of note is that IP Australia acknowledges that design applicants may want to protect the same design in both the virtual and physical form, and is exploring how this might work.
Partial Designs
Australia’s design system doesn’t currently protect parts of products, unless they fall within the scope of a ‘complex product’.
For example, currently, the designs system doesn’t allow for a teacup handle to be registered as a design separately from the rest of the teacup, since the handle is an integrally formed part of the whole. The proposal to allow for the protection of partial designs would make it possible to separately obtain design registration for a teacup handle.
There was broad support by stakeholders for the proposal to introduce protection for partial designs into the Australian designs system.
This proposal would bring Australia’s design system into closer alignment with the designs systems of a number of overseas jurisdictions, including the US and Europe.
Pleasingly, IP Australia now proposes expansion of the designs system to include the registration of partial designs.
Incremental Designs
The current Australian design system poses problems for owners of existing design registrations when they attempt to pursue design protection for a small changes/improvements to their existing registered designs. This is because the earlier registered designs form part of the prior art against which the newness and distinctiveness of their subsequently filed design applications must be assessed.
IP Australia initially proposed updating the designs system to allow designers to file a preliminary design at an early stage to obtain a priority date, and then convert it to a main design application within six months, incorporating any incremental design features. The main design would adopt the priority date of the preliminary design.
Stakeholder support for this proposal was mixed. A potentially significant issue raised by stakeholders was with regard to pursuing protection overseas, and the potential loss of priority because foreign design systems may not recognize a priority claim to the preliminary design that is (even slightly) different to that of the main design ultimately pursued. Concern was also raised regarding the potential uncertainty for third parties in having protection being later pursued for a main design that differs from that of the earlier filed preliminary design.
At least in part because of these stakeholder concerns, IP Australia does not propose expansion of the designs system to include the registration of incremental designs.
Replacement of Statements of Newness and Distinctiveness with Written Claims
Users of the Australian designs system are very familiar with the current practice of optionally filing a statement of newness and distinctiveness with design applications.
Statements of newness and distinctiveness can be used by applicants to clarify what is shown in the representations of an application. For example, a statement of newness and distinctiveness can be included in a design application to disclaim any features shown in dashed line format in the representations. Statements of newness and distinctiveness can also be used to highlight new and distinctive features of a design that may exist in a crowded field.
Of note in their discussion on partial designs, IP Australia commented that they propose abolishing statements of newness and distinctiveness from the designs system, with such statements to be replaced with the option of filing a written claim.
IP Australia have indicated that there is currently no envisaged practical limitation as to the wording of written claims under the revised system.
It is unclear to us at this stage as to whether there will be any practical difference in what, if anything, a written claim included in a design application under the revised design system may provide over a statement of newness and distinctiveness filed under the current system.
In describing the proposed written claim system, IP Australia note that: “We will also ensure it is possible to amend a written claim at relevant points during the term of protection and that related third-party protections are available.” This will provide one potential advantage over the existing system, which doesn’t allow for amendment of a statement of newness and distinctiveness post-registration.
For any questions on these issues or other design matters, please contact the head of our designs team, Davin Merritt at davin.merritt@pof.com.au.