IP Australia has opened up a consultation period on three proposals to enhance design protection in Australia. The consultation period closes on 8 August 2023, with submission being taken via phone, uploading of written submissions, or by taking an online survey Enhancing Australian design protection – IP Australia – Citizen Space.
The proposals relate to:
- allowing protection of virtual, non-physical designs, including screen displays, icons and graphical user interfaces (GUIs);
- allowing design protection for parts of a product made in one piece; and
- assisting designers to protect incremental improvements throughout the design process.
In 2019, IP Australia sought stakeholder views on a number of areas of potential amendment to Australia’s Designs Act. Two of these areas were removing the current inability to obtain design protection for parts of products and virtual designs. Despite the very positive indication from respondents in favour of allowing partial design protection and some form of protection for virtual designs, IP Australia elected not to make any changes regarding these two areas at the time, stating that it would continue to consider these issues.
In the interim some stakeholder consultations have occurred and now the consultation has been opened up to the public. On the whole, this is welcome news to FPA and the design community, as it would bring Australia into closer alignment with the design protection afforded in many other countries.
Currently it is not possible to obtain an enforceable design in Australia when the newness and distinctiveness of the design is in features that are only displayed when a device is in use, such as features on a display screen. This is because IP Australia does not consider these features to be part of a product.
IP Australia is proposing to enable protection for design elements that are visible when the product is in use, by:
- expanding the definition of “product” to include “an intangible thing, the use of which results in the display of visual features through electronic means”; and
- amending the definition of “visual feature” to include “visual features that appear for a limited time when the product is used in its normal way”.
These changes would also allow protection for composite products, comprising both physical and virtual components, whilst protection could also be separately sought for the physical component and the virtual components.
The current definition of “product” includes “a component part of a complex product… if it is made separately from the product”. Thus, protection is for the overall appearance of a physical product made in one piece. Whilst parts of the product can be emphasised and de-emphasised using the Statement of Newness and Distinctiveness (SOND), those parts shown in broken lines are still assessed as part of the overall appearance. This is contrary to most other countries, such as the United States and Europe, whereby any parts shown in broken lines are “disclaimed” from the scope of the design.
IP Australia is proposing to expand the definition of design to include partial designs, which would be defined as “the overall appearance of a part of a product resulting from one or more visual features of that part of the product”. This will effectively allow the other parts of the product to be disclaimed, in line with the approach of other countries. Such expansion would also allow for virtual designs to be covered separately from the physical product on which it is shown.
The consultation paper also discusses a proposed new “similar products” test, such that the prior art base for partial designs would consist of designs or partial designs for products that are the same or similar to the product/s for which the partial design is registered.
Whilst the first two consultation papers are mostly aligning with existing systems overseas, the third paper is directed to a proposal of a different kind.
IP Australia are proposing changes to allow designers “to protect their designs as they develop their products throughout the design lifecycle”. They propose two ways to do this:
- before registering the main design (preliminary designs): file a low-cost preliminary application and within 6 months, file the main application. The main application may include incremental changes made to the preliminary design.
- after registering the main design (post-registration linking): link the subsequent incremental design to the earlier registered main design. This linkage ensures the earlier main design would not make the subsequent design unregistrable.
The first proposal is somewhat akin to a provisional patent application. The second perhaps akin to a patent of addition. If adopted, both would provide applicants with a mechanism to more confidently file design applications with less fear of their own earlier applications invalidating their later applications.
The three consultation papers go into a number of other issues related to the detail of the proposed changes. If you would like to discuss the detail, please get in touch.