For the purposes of design registration, design means the overall appearance of a product resulting from one or more visual features of the product. These features may include the shape and configuration (three dimensional features), and the pattern and ornamentation (two dimensional features).
A ‘product’ is a thing that is manufactured or hand made. A component part of a complex product is considered a product in its own right.
Registering your design gives you the exclusive right to make, sell, import, use, keep and authorise your product in Australia for five years. It is the most effective way to ensure the monopoly right for your product and protect it against infringement.
A design will be registrable if the design is new and distinctive when compared with the prior art base.
A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base. When making judgement as to whether a design is substantially similar in overall impression to another design, more weight should be given to similarities between the designs than to difference between them. This is the same test as the infringement test.
Registering your design gives you the exclusive right to make, sell, import, use, keep and authorise your product. It is the most effective way to ensure the monopoly right for your product and protect it against infringement.
Registered designs are a powerful tool for protection against unauthorised copying and are a valuable IP asset in a company’s IP portfolio. We recognise the importance of registered designs and work closely with you to evaluate the key features of your designs and optimise the scope of design protection to maximise a design monopoly.
We have considerable experience in design and enforcement matters having acted for design owners in a variety of industries.
If someone copies, imports, sells or uses a registered design for the purpose of trade in Australia, then an infringement has occurred. Even keeping the design with the intention of trading it amounts to infringement.
In some jurisdictions, a design application will be registered without being substantively examined. This often means that the design registration cannot be enforced until it has been examined, which often needs to be separately requested. During the substantive examination process, the Examiner will determine whether the design is new and distinctive.
If enforcement proceedings are necessary, we can assist in devising litigation strategies based on our sound technical knowledge and practice in designs law to help you achieve your commercial objective. We will also advise on alternative dispute resolution practices, such as mediations and arbitrations. These alternatives can resolve infringement disputes more quickly and cost effectively.
Actions for design infringement are often met with counter-claims seeking to revoke the registered design alleged to have been infringed. Typically the claim is made on the grounds the design is not new and distinctive, in light of registered and unregistered designs that were publicly available before the filing date of the registered design.
A design may also be revoked if the design registration is re-examined, and the Examiner finds that the design is not new and distinctive in light of the prior art. A party requesting re-examination will usually only do so if it has details of prior designs relevant to the newness and distinctiveness of the design.
We can assist with making requests for re-examination and responding to adverse reports issued as a result of re-examination.
Any design enforcement strategy should be firmly based on advice about whether the design of a product infringes a registered design and whether the registered design is valid.
We provide validity opinions, including designs searches to assess whether designs are new and distinctive, and infringement opinions to ensure that clients can enforce their design rights against potential third party infringers.
When launching a new product on the market or when looking to file a design application, a professional design search provides a strong platform for informed decisions.
Organisations are using design searching to monitor competitor design filing activities, in order to better understand the competitive landscape in which they operate.
Knowing where and how to look for relevant technical, design and business information when conducting a comprehensive design search requires high level training and years of experience.
As an assurance of quality, all our searches are conducted by, or under the supervision of, an experienced patent attorney, often supplemented by the expertise of a professional searcher. Our Patent Intelligence Services group are experts on searching and analysing business-critical information.
Our search and analysis service offerings include:
Prior art is either published information that may hinder the registration of a design application or invalidate a registered design because it was published or available before the important priority date of the design registration or design application.
To evaluate whether a proposed design is registrable, it is recommended that a prior art novelty search be conducted to identify potentially relevant prior art. If it is the strength of a registered design that is under review, then a validity search will assist in making the assessment, and often prior art can be located that may render the relevant design registration in question to be invalid.
Freedom to operate searches and analysis can help an organisation in a number of ways. The knowledge obtained from a patent infringement search can help guide research and product development, and may direct development to areas that are most likely not to have impediments to the commercialisation of products, and which also may be fertile areas for development of your own patent rights.
Most importantly, a Freedom to Operate Assessment will ensure that new products or services being brought to market will not infringe design rights owned by competitors, and will identify possible roadblocks to the safe commercialisation of a product.
Design application information is a key resource being used organisations to gain a clearer understanding of competitors and their future plans.
A profile of the design application activity of a company or an inventor obtained during a name search can be invaluable for gaining insight about a competitor’s business goals, as well as any recent change in its focus. Many new product related activities can be monitored by conducting subject specific watches for new design applications filed in relation to a particular technology or by a particular organisation or person.
Each jurisdiction has its own unique renewal and maintenance schedule that must be adhered to and managed to protect the design rights. The management of the renewals that are payable across your IP portfolio, is a long-term and on-going process, and can be relatively complex to administer, with potentially disastrous ramifications if the payment of a renewal fee is inadvertently missed.
We have a very experienced and talented Renewals Group that offers very cost competitive renewal services, and makes the process easy for you across all jurisdictions. You are in safe-hands.