Are design registrations becoming a more useful IP protection?

Earlier this week the Australian Government’s Advisory Council on Intellectual Property published its final report that was completed in March 2015. The report of the Design registration system follows a detailed review that began in 2012.

In the 70 page report there are 23 Recommendations. There are recommended 3 main categories of improvements including:

• Accession to the Hague Agreement
• More concordance with overseas designs registration systems
• Change of General Outline of Design Procedure including maximum term and process to provide stronger design registrations.

Entry into the Hague Agreement

Although the “green light” has only been given to harmonise the Australian Design rights with major trading parties, and international treaties that we are or will soon be signatories, there is the positive step to further investigate the merits of joining the Hague Agreement. One factor in this step is the recent expansion of its membership.

The Hague Agreement will provide a streamlined filing process for international design applications over a range of signatory countries similar to that provided in the patent system for over 140 countries by the PCT (Patent Cooperation Treaty) international patent filing system.

More concordance with overseas designs registration systems

• More similarities and an expansion of rules are recommended to allow easier ability to claim priority from overseas applications within the 6 month period from first application as allowed under the Paris Convention;
• Multiple designs to be allowed in a single application with reduced fees for the additional designs;
• Harmonisation of multiple design single application system with similar design registration systems where Australians are likely to file designs such as in Europe Community Design system.

General outline of design procedure

If the recommendations are accepted and enacted the Australian Design system will change from present system of immediate registration, voluntary examination and certification, and 10 year registration term to something like the following:

1. Grace period of six months before the filing date to exclude a designer’s own disclosure from the prior art base;
2. File application – be given a filing date and a filing number – but application not registered or published. Filing of a declaration to effect the grace period prior to the filing date;
3. Statement of Newness and Distinctiveness defining the design in the application able to be amended prior to certification;
4. Publication to occur at 6 months after filing date of the “uncertified design” registration;
5. Examination needed to be requested within the first five years;
6. Registration is certified if successfully passes examination;
7. Registration to be initially for five years from filing date and renewable for two further five year periods to a maximum 15 year term (if we join the Hague Agreement);
8. Grace periods for renewal deadlines to align with other IP rights; and
9. Opposition by third parties can occur after registration.

The above summary process is based on the final proposals. What is accepted and how it is to be implemented are still to be determined. But it does appear that Design Registrations will continue to be a useful tool in your IP protection armament.