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Proposals to improve the Australian design rights system
A registered design right protects the overall look of a physical product. However, due to technological and commercial developments there are various “products” that are not protected by the current registered design regime.
To meet this problem and modernise the law, IP Australia is considering extending the scope of registrable designed to include:
- Virtual designs
- Partial designs
- Incremental designs.
Virtual Designs
IP Australia is proposing protection of non-physical and active-state designs such as screen displays, screen icons and graphical user interfaces [GUIs].
Partial Designs
IP Australia proposes the protection of only part of a product made in one piece for more than one product, such as a handle used on a range of different vessels or a heel for a shoe used on different styles of shoes.
Incremental designs
The current designs system does not address the incremental nature of design development. IP Australia proposes to provide protection of designs as they evolve during the design process and lifecycle.
To provide registered protection for such different forms of designs, IP Australia proposes the following amendments to the existing law.
- Expand the concept of “design” and definition of product to enable design protection for a range of virtual products and partial products;
- Expand the concept of “design” to include transient visual features of products in use such as designs on a computer screen that are only visible when the computer is turned on;
- Allow visual indicators and/or written claims to indicate the part of a product in which the partial design is embodied;
- Introducing a new standard of clarity so that the scope of protection sought is clear to the familiar person, considering the representations and any written claim;
- clarify how the infringement provisions would apply to virtual and partial designs.
In relation to incremental designs, IP Australia has put forth two proposals, which together are intended to provide added flexibility throughout the design process.
Option 1 provides for the filing of a low-cost preliminary design application. The design can then be further developed for up to six (6) months before the main application for a design with incremental charges - the main design - is filed.
Option 2 provides for the linking of a subsequent design, with incremental changes, to an existing registered (main) design. The term of the subsequent design would be limited to the maximum term for the main design. This option ensures that the use or publication of the main design does not render the subsequent design unprotectable.
IP Australia is also seeking views on how the copyright and design overlap should apply to virtual designs.
Some of these proposals correlate to similar proposals for reform currently under review in the EU. We anticipate that the proposed changes will be welcomed by creators but as is often the case the devil will be in the detail of how the new types of “designs” are defined.
To find out more and have your say, see the IP Australia consultation hub. Submissions can be made until 8 August 2023.
Elena Szentivanyi - July 2023
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