Design application process
How to register a design (how to get a design patent)
A registered design gives you monopoly rights over how your product looks for up to ten years. It forces others to think twice before copying your product.
Obtaining a registered design usually involves filing black and white line drawings of your product.
Patent attorneys work with illustrators and designers to prepare drawings which cover not only your product, but also any obvious modifications your competitors might make.
Below, we cover how to register a design in Australia and overseas (where they may also be called “design patents”) We encourage you to follow along by downloading our design flowchart below:
IMPORTANT
Do not publicly disclose your product until you have filed your design application.
Even accidental disclosures of your product can invalidate design protection.
Patent attorneys are bound by client-attorney privilege and will treat discussions with you as strictly confidential.
Step 1 – Prepare your design drawings
A registered design protects how your product looks. As such, you’ll need to submit visual representations of how your product looks from different views. It is good practice to submit black and white line drawings, typically generated from CAD files and your industrial designer or engineer may be able to generate these drawings for you.
Often, these drawings will need some specific amendments to maximise the scope of your protection; we can work with your industrial designer to produce the drawings and views needed. Alternatively, you can engage a specialist patent and design illustrator to prepare the drawings required.
Below are some tips for the preparation of your drawings:
- Drawings should reflect your commercial product, otherwise you may end up with protection that is not relevant or valuable.
- Visual features of your design that may be easily modified or omitted by competitors may be shown in dashed lines.
- Drawings should not include dimensions or labeling aside from Figure numbers, page numbers and drawing views.
- Break lines can be used to indicate areas of variable length.
Step 2 – File your design application
Your finalised drawings can then be filed as part of a design application with the Australian Designs Office. The design application must include a product name; this name should be chosen carefully because it affects the breadth of your protection and the volume of prior art that may be cited against your application.
You may also include a Statement of Newness and Distinctiveness (SoND) with your design application. This must be considered with great care because it can significantly alter the scope of your protection.
Once filed, there are important deadlines and requirements to bear in mind:
- The pending rights established by your design application are recognised in 180+ countries for six months.
- To pursue design protection overseas, you will need to file corresponding design applications in each country of interest before the six-month period expires.
- Different countries have different drawings requirements – it is important to get your drawings right at first instance because you may not be able to amend them after filing.
Step 3 – Register your design
Soon after filing, the Australian Designs Office will conduct a formalities check and may raise objections if there are defects in your application (e.g. your application includes more than one design).
If formalities objections are not overcome within two months, your design application will lapse. Your design will be registered once all formalities objections are overcome.
A registered design right gives you protection over the appearance of your product and exclusive rights to commercially use, license or sell the design.
Registration protects your design for five years from the filing date of your design application. The registration can be renewed for a further five years by paying a renewal fee. After the ten year period, your registered design ceases and is free for the public to use.
Please note that a registered design does not give you the right to take action against infringers. To take legal action, you will need to have your design certified (see steps 4 and 5 below).
Step 4 – Optional examination of your design
To legally enforce your design right against infringers, your design must undergo and pass an examination.
During this stage, an examiner of the Australian Designs Office will search for designs similar to yours. If an earlier-published design is too similar to yours, your design may not pass the examination stage.
To pass examination and be certified, your design must be considered new and distinctive in light of all earlier-published designs.
Whether your design is new and distinctive can depend significantly on the drawings, the product name and the SoND. There is a time limit of six months to overcome all issues raised during examination. Your patent attorney can help formulate a strategy for overcoming any objections raised during examination. If objection are not overcome in time, your design registration will cease.
Step 5 – Certify your design
Once any and all objections are overcome and your design is found to be new and distinctive, your design will be certified.
With a certified design, you will be able to legally defend and enforce your design against third parties if they use your design with your permission.
The examination and certification process is optional in Australia, but many other countries will examine your design as a matter of course. Foreign patent attorneys may need to be engaged to handle any objections raised against your overseas applications.
Summary
The design application process can be relatively straightforward and yet provide extremely powerful protection for visually distinctive products.
If you have any questions about the design application process and how to get a design patent, please feel free to book a complimentary appointment with us below: