Partial designs

The first area covered by the consultation deals with whether “partial” designs should be deemed allowable in Australia. An example provided here is in the case of a teacup, whereby, under the potential new partial design practice, an Australian design registration directed to just the handle of the teacup would be possible, compared with the current practice whereby only an Australian design registration directed to the entire teacup shape would be allowable.

As background, this concept of allowing partial designs is already possible in many other jurisdictions around the world, including the UK and EU at least. This proposed change would therefore be considered entirely welcome.

Virtual designs

The second area of consultation considers the possibility of extending Australian design registration protection to better include “virtual” designs. If adopted, this change would then extend design registration protection in Australia to include more intangible guises of design, such as designs relating to graphical user interfaces (GUIs); icons; virtual reality and/or augmented reality. Protection for at least some of these subject matter areas, such as in respect of GUIs and icons, is already possible in a number of other design registration regimes around the world.

Particularly if this proposal directed to virtual designs was adopted alongside the proposal relating to partial designs (noted above), it is envisaged that this combination might present many more opportunities for protecting designs (or aspects thereof) intended for reproduction/depiction on a computer screen, in Australia, via a design registration.

In all therefore, the prospect of broadening the ambit of Australian design registration practice to better encompass “virtual” designs will no doubt be of tremendous commercial interest to many stakeholders globally.

Improvement (incremental) designs

The final area from the consultation is aimed at preventing subsequent Australian design registrations, which are directed to improvements/modifications of a product depicted in an earlier Australian design registration, from being anticipated by the earlier Australian design registration.

Currently, if a first Australian design registration for a particular product is published, and then a second design registration is applied for in respect of an improvement, or variant, of this same product, the disclosure from the first design registration may, in some instances, be used to challenge the validity of the second design registration.

Linked design applications

One option, for addressing this potential conflict, under the consultation, would be to allow the second design registration to be “linked” back to the first design registration, in such a way that the first design registration in these instances could not be used to challenge the validity of the second design registration. This concept already exists in some territories around the world, such as in Japan, as background.

To the extent this link would then be made between the two Australian design registrations, however, this would then mean that the maximum term of protection for the second design registration would not be allowed to exceed that of the first Australian design registration. So, effectively, using this linking process would truncate the maximum term of protection for the second Australian design registration. This in itself is quite a disadvantage, noting the maximum term of protection for an Australian design registration is only ten years from the filing date of the design registration.

Provisional design applications

A related proposal relating to the above linking process would be to effectively introduce the concept of an Australian “provisional” design application, to better allow for Australian design registration protection to be applied for earlier on in the design process for a given product.

Under this potential “provisional” design protection regime it would be possible to pursue a first provisional Australian registered design application directed to a first, draft, iteration of a design. In this way, it would then be possible to pursue a second, main, registered design application (within six months of the provisional design application) which then might include any changes/developments made to the design since when it was pursued as part of the initial, provisional design application.

Any such provisional design application would not ultimately be published, and the subsequent main design application would be entitled to the priority date of the earlier provisional design application to the extent the design depicted in the main application (including any of its changes over the provisional design application, if any) is deemed to still create the same overall impression as the design depicted in the provisional application.

In practice, this proposal to implement a provisional design application in Australia would likely be of greater interest to the Australian domestic market, compared with being of interest to entities outside Australia who might have already pursued design registration protection in territories, outside of Australia, where such “provisional” filing techniques are not possible.

Summary

One notable omission from the consultation is for opinion on whether the maximum term of protection for an Australian design registration should be increased from ten years from the filing date of the design registration. This maximum term of protection is well below what is possible in many other territories globally, and is also below the minimum term of fifteen years from the filing date of the design registration, which is otherwise required for Australia to formally accede to the 1999 Geneva Act of Hague Agreement, which the Australian Government has previously noted that it would take “reasonable efforts” to sign up to.

That being said, to the extent any of the above proposals from this consultation are adopted, it is hoped that these might go some way to fostering greater usage of the Australian design registration regime, and would go some way to better harmonise this regime with at least some of the policies already in place in other design registration regimes around the world.

Useful links

• Australian Government, IP Australia, Consultation: Enhancing Australian design protection: dycip.com/ausdesignprotection
• Australia-UK FTA negotiations: agreement in principle: dycip.com/ausukftanegotiations