- Designs Registration
- Enforceable Designs
- Multiple Designs
- Opposition to Designs
- Timeframes for Designs
- After putting in a request to register a design, can I change my mind?
Yes, you may replace the request for registration with a request for publication. You also have the option to withdraw the design.
- How long do I have to lodge a request for publication or registration?
You must lodge a request for all of the designs in an application within 6 months from priority date.
- Is there any way of deferring registration of a design?
The only way to defer registration is not to request registration or publication. However registration or publication must be requested within six months of the priority date of the application or the application will lapse.
- What is the benefit or purpose of selecting publication of the design as opposed to registration?
The only benefit or purpose is that by selecting publication you would be getting a "defensive publication".
- What is the difference between Registration and Publication?
Registered designs can be made enforceable by certification, and carry exclusive rights. Published designs do not give any rights.
- At filing, what checks are performed? (Other than that the fees match the number of designs indicated)?
The checks at filing are a) information that indicated that what is filed is intended to be a design application b) allows the identity of the applicant to be established c) allows the applicant to be contacted d) a representation of the design
- How do I get a Certificate of Examination?
The Registered Design must have passed examination. Examination will generally be initiated by request from any person, or by court order.
- How does the Designs Office intend to conduct its searching ie. which databases will be accessed?
1) Our register via ADDS for post 1985 and hard copy for pre 1985 2) The Trade Marks register via the online ATMOSS database 3) Registers of other countries like UK etc that have organised databases on the Internet with Locarno classification and images 4) Internet general search where we have a feeling that we have seen something before or that the design in question looks like something from a particular source.
- I have seen a design overseas; could I register it in Australia?
Probably not - in order to apply for registration, you must be the legal owner of the design. Also, under the new Act, designs published in a document within or outside Australia form part of the prior art base.
- If any person can request examination, who pays the examination fee?
If the owner makes the request, then the full fee is payable by them. If a third party makes the request, that party must pay half the fee, the owner must pay the other half.
- In the case of infringement of a registered design, can damages be claimed back to the filing date of the application upon which the registration was granted?
Yes, in this case damages can be claimed back to the filing date of the application.
- Is a registered design enforceable?
Not unless it has been examined and had a certificate of examination issued
- What is the time limit for the owner to pay the other half of the examination fee (if examination is requested by another person who pays half the fee)?
In the case where examination is requested by a third party, the time limit for an owner to pay the other half of the examination fee will be two months. This will happen by the issue of an ITP (an invitation to pay). This is in the fees part of the regulations.
- What will examination cover?
Examination will include a search of prior art, and checks against proscribed products/designs. Following this, a certificate must be issued unless the examiner has determined grounds for revocation based upon the above.
- If I file an application including multiple designs and during examination, one or more of those designs is found to be invalid, will all other designs in that application be held invalid even though they would have been valid if applied for separately?
Each design in a multiple application will be considered as a separate design when it comes to examination/revocation. When one design in a multiple design is found to be invalid the others are not affected by this revocation in any way.
- In a design registration containing multiple designs, can the owner choose to examine or renew only some of the designs (ie. not all of them)?
In this case the designs will be registered individually, even though they were lodged as a single design application. This means that each individual design registration, which only has one design, can be renewed and/or examined as required.
- Is there a discount when filing multiple designs?
There is no "discount" for multiple designs. So the cost for multiple designs is simply the cost for a single application applied to each design in a multiple design.
- When registering a design if there are three variations on the one theme, do you need to lodge three different applications or is there provision in the application form to do this on the one application?
The Designs Act has provision for a common design been applied to different products. Only one application is required if it is a common design being applied to different products. If the three variations are in fact different designs three designs applications (or a multiple design application, if it meets the requirements of a multiple design application) will be required.
- Would you require a different set of drawings for each variation?
Yes, irrespective of which type of application is forwarded a set of drawings for each variation is required.
Opposition to Designs
- Are there options available to oppose a design other than requesting examination?
Yes, there are still some inter parties opposition procedures. Some examples are opposition to extensions of time, disputes between applicants, surrenders etc. But examination, and re-examination, will be the process required to establish validity of registration.
Timeframes for Designs
- What is the term of a registered design?
A maximum term of 10 years, with a renewal fee payable at the 5th anniversary from filing
Last Updated: 15/9/2012