IP Australia has published three separate proposals for changes to the Australian design rights system and is currently seeking public submissions about them.
These proposals follow on from a review of the design economy that IP Australia completed in 2020, and form the first steps towards legislative change. Key details of the three proposals are summarised below.
Currently it is not possible to protect designs for non-physical products, including visual features of electronic displays.
IP Australia is proposing to extend the registrability criteria to allow for protection of designs that do not have a permanent physical form. Examples of such designs would include electronic screen displays including user interface layouts, icons, virtual reality displays, and augmented reality displays.
The proposal on virtual designs includes detail on the potential legislative amendments required, as well as the interaction of virtual designs with copyright.
As many overseas jurisdictions already allow protection of virtual designs, IP Australia believes these changes would improve legal harmonisation as well as providing a new incentive to businesses and designers to innovate.
In Australia it is currently only possible to obtain registered design protection for the overall appearance of features of a physical product that is made in one piece. It is not possible to protect parts of a unitary whole product, for example just the handle of a mug.
IP Australia’s second set of proposals recommend expanding the criteria for registration to allow protection of partial designs.
The partial design protection is proposed to extend to the protection of a partial design in relation to multiple specified products. For example, this could allow the protection of a new and distinctive piece of branding in relation to a range of products, such as items of clothing, specified accessories, or particular homewares.
The final proposal is on incremental designs. This proposal is aimed at addressing the commonly-felt tension for designers of on the one hand filing as soon as possible to obtain a priority date and on the other hand waiting to file until they have matured their design.
The proposal on incremental designs has two components. The first would see the establishment of a preliminary application, similar to a provisional application for patents. The preliminary application would give a filing date, preventing any later disclosures from being citable against the design application.
After filing a preliminary design, the applicant would have 6 months to file a full registered design application. The full design would be entitled to the filing date of the preliminary design, provided that there is a substantial similarity in overall impression between the designs of the two applications. This means there would be scope for obtaining the early filing date, but also protecting developments over the interim 6 months.
The second component of the proposed incremental designs regime would allow for the protection of further design developments, after a registered design application has been filed.
Currently, a subsequent registered design’s newness and distinctiveness are assessed in light of any earlier filed and published Australian registered design application. The proposal would allow for linking of a later design application to the earlier registered design. This linking would mean the earlier design is not citable against the later design. It would also limit the term of the later design to that of the earlier design.
The result would be analogous to patents of addition under the Australian and New Zealand patent systems.
To read more about the proposals, fact sheets and the full consultation papers are available here on IP Australia’s website.
If you’ve got questions about how these proposals could impact your business, and how you can follow their development and, if necessary, proactively update your IP strategy, please get in touch with one of our attorneys.
 M Campbell and L Halperin, ‘Redesigning Designs: The Future of Design Protection in Australia’ Intellectual Property Forum: Journal of The Intellectual and Industrial Property Society of Australia and New Zealand, 2020, (121):9–17.
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