Breaking down barriers to innovation: understanding Australian industrial designs (Part 2)

In a modern society where innovation is accelerating, the correct selection and use of intellectual property types is the prerequisite for ensuring effective protection of design creativity. In this article, we will discuss in detail the important principles and considerations of Australian design right applications in terms of steps, costs, strategies, etc.

Things to consider before applying

• Make sure this is the most appropriate type of IP
  • Design rights only protect the appearance, not the function or brand. If you want to protect these, you may need to apply for an invention patent or trademark.
• Avoid public disclosure of designs (including social media), which may lose their “novelty”
  • Sign a non-disclosure agreement (NDA) when discussing with others
• If the design has been made public, you can use the novelty grace period exception, but this may not be accepted and should be used with caution.
• Conduct necessary similar design searches before submitting a new application
  • It is recommended that you search the Internet, social media and Australian and overseas intellectual property databases to see if there are similar designs before applying.

The relationship between industrial design and other intellectual property rights

• After the design right is registered: it may affect the enforceability of the copyright, especially after large-scale production (such as more than 50 pieces)
• If the appearance and function of a product are closely related, it may be necessary to apply for both the design and patent at the same time to prevent them from interfering with each other.

Two-step design process

• Unlike other intellectual property rights, in Australia, designs are granted patents, but they are not in themselves enforceable rights. To enforce design rights, the granted designs must be certified.
• IP Australia only conducts a formal review of the design and does not determine whether the design is similar to other designs. After the design is authorized, anyone can request a substantive review of the design. If the design passes the substantive review, it will be certified.
• Certification gives the right holder legal rights, enabling him to enforce the design rights and take legal action against others who use it without authorization. Certification is optional and can only be done after the design has been authorized.

What rights does a licensed design provide to the right holder?

• Exclusive right to use the design in Australia
• The exclusive right to authorise others to use the design in Australia
• a right that can be increased in value and sold or licensed in Australia
• Within 6 months of filing in Australia, you can apply for the same design overseas

How to file a design patent application with the Australian Patent Office?

• Submit your application through IP Australia’s online services platform. It is recommended to first confirm registrability using the Australian Design Search Database.
• Official Fees:
  • First design: Application fee: AUD 250.00 (submit online)
  • Each additional design in the same application: Each additional design: AUD 200.00
  • Substantive examination fee is required before certification: AUD 420.00 per design
  • Renewal fee: AUD 400.00 in the fifth year to extend the protection period to 10 years

International protection

• If you need to protect your design overseas, you need to apply to each country separately. The procedure is complicated, so it is recommended to hire a professional to assist you.

Official Release

• IP Australia is responsible for publishing all intellectual property developments, including authorization, certification, and expiration.

Design rights and copyright may overlap

In many cases, the law may prevent a design from being protected by both copyright and design rights.

Copyright protection may be affected if:

• Such as "industrial application" of the design. Generally speaking, if 50 or more products incorporating the design are manufactured, it is considered an industrial application. However, this number may vary depending on the nature of the industry.
• If you plan to manufacture and commercialize your design, it is important to consider applying for a design right early on. A certified design right gives you the legal right to take action against others for using it. Before you apply for a design, keep all your sketches and prototypes confidential, including not posting them on social media or writing about them in industry journals.
• The overlap between design rights and copyright is complex and you should consult a professional for details.