What does design registration protect?
Design registration protects the unique visual characteristics of an industrial or commercially used product. These characteristics can include the overall shape, the surface configuration, applied patterns, and ornamental features — in short, how the product looks rather than how it works.
Design registration protects how a product looks. Patent protection protects how it works. The two are complementary.
To qualify for registration, the visual features must be both new and distinctive when compared to designs that have been published or used anywhere in the world. These requirements are broadly analogous to the patent eligibility requirements of novelty and inventive step, though they apply to visual appearance rather than function.
Should you use design protection?
Whether design protection is appropriate depends on what you are trying to protect. In practice, there is often a significant overlap between patent and design protection, because a product may incorporate features that are both functionally innovative (eligible for patent protection) and visually distinctive (eligible for design protection).
Where this overlap exists, pursuing both forms of protection is the recommended approach. This provides complementary causes of action: patent infringement against anyone who copies how your product works, and design infringement against anyone who copies how it looks.
Where functional and visual innovation overlap, pursuing both patent and design protection provides the strongest commercial position.
If a choice must be made between the two, patent protection is generally the stronger option. A well-drafted patent that claims the essential functional features of an invention is extremely difficult to design around. A registered design, by contrast, offers comparatively more scope for a competitor to alter the visual characteristics sufficiently to avoid infringement. However, design registration is typically faster and less expensive to obtain, which makes it a valuable tool in its own right — particularly for products where the visual design is the primary point of differentiation.
How long does design protection last?
A registered design provides protection for an initial period of five years from the filing date. This can be renewed once for a further five years, giving a maximum protection period of 10 years.
Registration and certification
Australia uses a two-stage process for design protection: registration and certification.
Registration is the initial step and is typically requested at the time of filing. At the registration stage, IP Australia conducts only a formalities check — the design is not examined for newness or distinctiveness. Registration establishes your rights and provides a published record of the design.
Certification is the step that makes your design registration enforceable. A registered design cannot be used to take legal action against an infringer until it has been certified. Certification involves a substantive examination by IP Australia to confirm that the design meets the requirements of newness and distinctiveness. Many design owners choose to seek certification only when an infringement issue arises, though it can be requested at any time.
A registered design is not enforceable until it has been certified through substantive examination by IP Australia.
For a detailed walkthrough of each stage, see our guide to the design registration process.
Publication as a defensive strategy
As an alternative to registration, you can request the publication of your design. Publication does not give you any enforceable rights, but it establishes the design as prior art — preventing others from registering the same or a substantially similar design. This defensive strategy can be useful when you want to preserve freedom to operate without committing to the costs of maintaining a registration.
Searching existing designs
Existing registered designs can be viewed on IP Australia's Australian Designs Search database. Searching the register before filing helps identify potentially conflicting designs and informs your application strategy.
International design protection
Design rights are territorial. If you intend to sell your product internationally, foreign design registrations should be filed within six months of your Australian filing date to claim the benefit of your original priority date under the Paris Convention. This is a shorter window than the 12 months available for patent applications, and missing the deadline can have serious consequences.
Foreign design applications must be filed within six months of the Australian filing date — half the time available for patent applications.
For more information on protecting your design internationally, see our guide to international design registrations.
Is design protection right for your product?
If you have developed a new product and are uncertain whether patent protection, design protection, or both are appropriate, contact Patentec for a complimentary consultation. We will assess your product and recommend the form of protection — or combination of protections — that best serves your commercial objectives.