Registering a design in Australia
Design registration protects the visual appearance of a product. Registration is a two-stage process: formalities registration, then an optional certification examination that is required before infringement proceedings can be commenced.
This is an 8-step workflow for registering a design under the Designs Act 2003 (Cth), covering novelty and distinctiveness, representations, the examination decision, and the path to certification.
Before you start
- Design disclosure documented with dated product photographs or CAD
- Prior art and market search conducted
- Priority date strategy confirmed (including any Paris Convention priority)
- Ownership chain from designer to applicant documented
The workflow
Confirm the design is new and distinctive
Assess whether the design is new and distinctive when compared with the prior art base, considering the informed user and the standard of the informed user under s 19.
Manage grace period and disclosure
Check whether any pre-filing disclosure falls within the 12-month grace period under s 17A. Advise on risks of overseas filings that predate Australian filing.
Prepare representations and statement of newness
Prepare clear line drawings or photographs showing the design from all relevant views. Draft the statement of newness and distinctiveness identifying the features relied on.
File the design application
File the application with IP Australia identifying the product, the designer, and any Convention priority claim. Consider whether to claim priority under the Paris Convention.
Respond to formalities examination
Respond to any formalities objections within the prescribed period. Amend representations only where permitted without broadening the design.
Decide on certification examination
Advise the client on whether to request certification examination now or later. Certification is required before infringement proceedings and tests novelty and distinctiveness.
Manage examination and any adverse report
Manage the examination process and respond to any adverse report within the statutory period. Consider amendment, argument, or withdrawal.
Maintain and enforce the registration
Diarise renewal at 5 and 10 years. On discovery of an infringer, request certification if not yet certified, then issue enforcement correspondence or Federal Court proceedings.
What you will have at the end
A registered and, where commercially needed, certified Australian design that can be enforced under the Designs Act 2003, with a clean ownership chain and defensible representations.
Common issues
- Prior art discovered after filing that destroys novelty or distinctiveness
- Representations that limit the scope of protection more than intended
- Statement of newness and distinctiveness that identifies non-visual features
- Infringement correspondence issued before certification examination
- Renewal deadlines missed, causing the design to lapse
Run this workflow on a real matter
Quillio drafts the statement of newness and distinctiveness, maps features to Designs Act 2003 ss 15-19, and flags prior-art and grace-period risks before filing. See /practice-areas/commercial-lawyers or start a free trial.
This workflow is a general guide. Design strategy depends on the product, the market, and the client's enforcement appetite.
Try this workflow with Quillio.
Quillio can run this workflow on a real matter, with citations to current AU authority on every step. The free trial requires no credit card.
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