Expert view: what the examiners see

IP Australia design examiner Joe
Published: 
28 January 2016

Design examiners are often the first point of contact for many of the most ingenious innovations originating in Australia. They were among the first to see Speedo’s Fastskin suit for example and the technical drawings for the new shape of the 2003 Holden Monaro.

Unfortunately, they also see some woeful design registration attempts. These include applications with poorly-sketched drawings that are not in proportion, or out-of-focus photos that are based on early prototypes that end up bearing no resemblance to the end product.

Our designs expert Joe Argenti believes such mistakes occur because many first-time applicants don’t understand what comprises good and bad design applications, what intellectual property (IP) design protection actually constitutes and the defined role IP Australia plays in that process.

‘A lot of people believe IP Australia is involved in the enforcement of IP rights. That we can deal with infringements [of their products if they occur]. They get very upset when they learn that we don’t do this,’ he explains. ‘That is the job of the courts, IP lawyers; not IP Australia.’

What design examiners do

Assistant Director of Trade Marks and Designs Group, Joe has worked at IP Australia since 1983. He spent seven of those years as a design examiner, and among other roles, has worked on the Australian Designs Act that instructs all design registration in Australia. He knows the IP business backwards.

Joe explains there are currently 10 design examiners at IP Australia. This group is responsible for processing applications to registration, and then if requested, examining the designs.

They also process publications requests – about one per cent of all applications. (Publication does not give any enforceable design rights but, because the design is published, it prevents others from gaining any rights to the design).

About 98 per cent of design applications are now lodged electronically. Joe recommends this option over snail mail as digital lodgement is cheaper at $250 and is integrated with our online services which helps applicants through the process and guides inexperienced applicants through the process.

The design examiners receive about 7000 applications a year. About 70 per cent of these are ‘good’ applications, by meeting the requirements immediately and are registered quickly, sometimes within two to three weeks.

Another 25 per cent of applications are missing relevant details or contain errors like dodgy photos and require amendments. Joe explains most of these designers respond to the letters we send them and submit the correct or additional information. About five per cent of applicants do not respond and their products remain unregistered.

Some common mistakes

Joe explains that another common mistake people make when they are filling out their design application is that they overwrite their ‘product/s’ description.

Sometimes less is more. Joe recommends being precise. If it’s a chair, write chair. You don’t have to add reclining chair with aluminium cup holders that can double as an iPhone charger.

Good product descriptions can be useful if down the track a legal dispute of ownership arises. If you are going to elaborate, then make sure the description of your design is accurate and informative. Joe advises it’s a case of buyer beware – know why you’re including description and think about the big picture; the end game.

There is also another part of the application process that causes confusion for many users – the so-called Statement of Newness and Distinctiveness (SoND). Joe confirms this is not mandatory.

However, it can prove very helpful to examiners if completed properly. People quite often ‘go to town’ trying to list everything about their product, Joe says. Again, this description may be referred to if your product is infringed at some point. Any included content needs to be relevant.

‘Quite often people include representations, that is, the drawings or photographs of a product, that are part of a prototype but then their product advances and changes and that particular look [in the application] becomes obsolete,’ Joe explains.

Applicants are required to submit a visual summation of their product – be it a drawing or a photo.

Joe says he’s seen some wonderful examples in his time. He’s also seen some photos that have been out of focus, show nothing of the product and are barely distinguishable. He’s also seen drawings that are not in proportion and therefore not a true representation of the product. These are grounds for possible rejection of your application or a poor registration that may be hard to defend.

Important tips

Joe’s top tips are:

  • keep your design uncommunicated and unpublished in the public domain until it has been filed
  • make sure your design meets the ‘new’ or ‘distinguishable’ test by making sure no-one has registered, published or used something too similar to your invention
  • register as the entitled person, not as companies or trustees. If you have entered into a contract to get a third party to complete your designs, then make sure that is clearly communicated in your application.

 

 

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