Q&A on Australian Design Patent Application

Who can apply for a design patent in Australia?

• The applicant or proprietor of an Australian design patent can be:
  • Designer
  • A person who creates a design under a contract with the designer
  • Employer of the designer
  • A person who is the assignee of the designer or who acquires ownership by will or operation of law
  • or the legal personal representative of the above deceased person
• Designs A design patent applicant must be a legal person, i.e. a corporate body or an individual. Normally, no proof of ownership is required to file a design patent application.

What can be applied for design protection in Australia?

• Australian design registration protects the visual appearance of a product resulting from its shape, structure, pattern and decoration. For example:
  • Manufactured or handmade items
  • Component parts (spare parts) of complex products (if manufactured separately from the product)
  • Items of uncertain size
  • Kits that can be assembled into products
• Currently, Australia has no provisions for the protection of partial designs or virtual designs (such as screen displays or icons or graphical user interfaces).
• While there is no exception for component part registration, section 72 of the Designs Act 2003 provides an exemption from infringement that allows a person to use a product that is a component part of a complex product for the purpose of repairing the complex product so as to restore its overall appearance in whole or in part.
• Australian design law provides protection to aftermarket parts suppliers from infringement of registered designs involving parts, encouraging greater competition in the parts market. If the design of a part can be used to improve or enhance the appearance of a complex product, a design patent application can be filed.
• Certain designs cannot be protected, such as:
  • Designs that fall within the ambit of the Olympic Symbols Protection Act 1987 or are covered by the Crimes (Currency) Act 1981
  • Designs related to electronic circuit layouts
  • Medals
  • Anzac-related designs
  • Ugly appearance design
  • Certain designs relating to government arms, emblems, flags or seals

Australian design patent application fees

• From October 1, 2024, the filing fee for an Australian design patent will be reduced to AUD 200. Legal fees vary by firm, but applicants can expect to pay between AUD 700 and AUD 1,200 to file a design application.
• Each design application is only allowed to have one design, unless it is a common design applied to different products. IP Australia is very strict in this regard. If the application is considered to contain more than one design, you will receive a notice of correction. If the defect cannot be overcome, you can withdraw the design; or delete the additional design and resubmit; or merge the application into multiple applications and pay additional fees.

Novelty grace period

• Australian design patent applications filed from 10 March 2022 will be eligible for a 12-month grace period. Publication of designs by foreign design offices is not included in the grace period. When the grace period was introduced, a prior use infringement exemption was introduced for use by third parties during the grace period. If the application is for a design corresponding to an artistic work, and the artistic work was published first, the prior publication cannot prove novelty.