Address confusion around 'registered' and 'certified' designs and the two-step examination process

Issue summary

Currently, registration of a design occurs following a formalities check and substantive examination occurs only on request. If the design is found to have met the substantive requirements of the Act it will be certified and only then is it enforceable.

However, a person unfamiliar with the system may assume that a registered design will provide an enforceable right. This may lead to disappointment or frustration with the Australian designs system, particularly if third parties believe a registered design to be enforceable when it's not.

In its 2015 'Review of the Designs System' in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended that the terminology for a registered but uncertified design be changed to make it clear that the design is not enforceable until certified. The Australian Government accepted the recommendation in May 2016.

Public consultation undertaken by the DRP suggests it's unlikely that new terminology would solve the core problem of uncertainty and confusion. As part of IP Australia’s designs reform, this issue is being reconsidered from a broader perspective taking into account the two-step examination process itself and what potential avenues might lead to greater certainty in Australia’s designs system.

History

• Policy development 4 September 2017
• Consultation 31 October 2019 to 20 December 2019
• Policy Development 20 December 2019 to 12 May 2020
• On hold 12 May 2020
• Status and priority reviewed August 2020
• Reviewed February 2021
• Closed 13 June 2023

Comments

IP Australia conducted a public consultation on this issue from 31 October to 20 December 2019.

We considered it further under the Designs Reform Project which was founded on a holistic review of the design ecosystem and its impact on the Australian economy. 

The Designs Reform Project didn't find sufficient evidence to support change to the two-stage process at this time. However, IP Australia has improved our education and awareness materials, including providing more information about the differences between registration and certification at the time of filing a design, and on the designs register. 

These initiatives should reduce confusion, and further legislative action doesn't appear necessary.