Introduction to the Australian Design Patent Application Procedure

Application Process:

• The application documents for industrial design in Australia must include:
  • applicant
  • Designer
  • Title or product name
  • a set of visual displays; and
  • Priority information (if any).
  • Declaration of novelty and uniqueness
• It is not necessary to provide a copy of the power of attorney or priority document, but it is still recommended that the patent application retain these documents in case the examiner requires them in subsequent procedures, but this is rare.
• Within 2-6 months after the application is submitted, the design application will undergo a relatively simple formality check, and those with no problems or defects overcome will enter the authorization procedure. The design will enjoy an initial 5-year protection period from the date of application, which can be extended for another 5 years after paying the annual fee renewal.
• At any time during the validity period of a design, anyone may file a request for substantive examination of the design. Substantive examination is usually conducted within 3 months of the request for substantive examination and completed within 6 months.

Review and Appeals Process:

• During the formal examination, AUIPO will first classify the design application according to the nature of the product. It will then examine whether the design application contains multiple designs. If there are no issues with the formal examination (or all issues have been resolved), the application will be granted.
• Substantive examination of design registration is voluntary and can be requested at any time by the right holder or any third party. If a third party requests a substantive examination, half of the examination fee must be paid and the right holder must pay the other half. If the right holder does not pay the other half, the grant procedure will be terminated.
• Avoid infringement claims in respect of uncertified design registrations which may constitute an undue threat under the Designs Act 2003
• After the substantive examination is completed, the representative will send a letter of intent to certify to the registered owner of the design, any person with an interest in the design, and (if a third party has requested the examination) the third party who requested it. If the third party disagrees with the representative's decision, they will have the opportunity to file an application within a specified period (usually one month) to express their opinion.

Opposition Procedure

• The Industrial Designs Act 2003 provides that interested parties may comment on certain decisions and may also object to requests for amendments or extensions. The typical opposition process is that after the filing of a notice of opposition, there will be a hearing process, where both parties have the opportunity to submit evidence. The hearing may be based on written submissions or an oral hearing request, or both.

Authorization Procedure:

• An applicant may make a request for grant when filing a new Australian design application or at a later date. If a request for grant is not filed within six months of the priority date, and the application has not been withdrawn, the request is deemed to have been made and the application will proceed to grant.
• Authorization within 2 months of submitting authorization request
• However, the authorized design cannot be implemented without examination and certification. That is, the design patent that needs to be implemented must undergo substantive examination and must be novel and unique.
• The substantive examination procedure is optional and can be requested at any time during the validity period of a granted patent. Substantive examination is usually conducted within 3 months of the request for substantive examination, and the substantive examination must be completed within 6 months.

The design is removed from the patent register

• Except for challenges to the ownership of a design based on rights issues, if a design is not found to be novel or distinctive after substantive examination, it will be removed from the Design Register.