IP Australia has recently reached conclusions based on a review of the Australian design economy that changes in the current design laws will significantly benefit the country. IP Australia has proposed reforms to design law with particular focus on virtual designs, partial designs, and incremental designs.
IP Australia stated that whilst virtual designs are potentially registrable, virtual designs are not certifiable and enforceable due to lack of a physical embodiment, lack of permanence in terms of visual features, and lack of identifiers in terms of design classification. This discourages creators and innovators from registering their virtual designs in the country, causing less investment activities within the country due to lack of protection. As the current trend of conducting business worldwide relies heavily on digital advertisement or communication, the discouragement of creators and innovators of virtual designs leads to potential economic loss.
IP Australia proposed that virtual products be added to the definition of ‘product’ in the Designs Act 2003 as an additional type of product. A ‘virtual product’ would then be defined as “an intangible thing, the use of which results in the display of visual features through electronic means”.
Secondly, IP Australia proposed that the definition of “visual features” be amended to cover the transient property of a virtual design by including “visual features that appear for a limited time when the product is used in its normal way”. Moreover, Designers will be allowed to provide a written statement alongside photographs, or numerical sequences, or various representations to clearly identify the visual feature of the virtual design in an active state.
IP Australia has also proposed a new clarity requirement that, at the time of application, any product in the design application must be clearly identified in a specific manner such that a familiar person can determine the product’s nature and intended use.
In view of the protection provided by the Copyright Act for virtual designs, IP Australia noted that the implementation of the proposed amendments to the Designs Act 2003 to protect virtual designs may lead to ambiguity in terms of how the overlap provisions in the Copyright Act are applied to virtual designs.
Under the current design law in Australia, a design right protects the overall appearance resulting from the visual features of a physical product made in one piece. To claim protection of a design of part of a product, a Designer must file multiple applications showing a design of part of a product for multiple products. This method of filing multiple applications is costly to the Designer which discourages them from filing.
IP Australia has proposed that the definition of ‘design’ be expanded to include partial designs. A partial design will then be defined as the overall appearance of a part of a product resulting from one or more visual features of that part of the product. This proposal covers both parts of physical products and parts of virtual products.
Furthermore, IP Australia proposed that the Designer may wish to apply for the design of an entire product and the design of one or more of its parts in a single application. The Designer must then indicate the parts of the product the partial design relates to in their application. The Designer may opt to include visual indicators in figures, a written claim, or both.
IP Australia understands that the current Designs Act 2003 is not aligned with how designers work. Designers make incremental changes to product designs which undergo prototyping and testing. However, the linearity of the current design registration process applies a pressure on Designers which may cause them to:
- immediately file a design application on an early form of the design,
- delay filing of an application until a final design has been achieved, or
- file multiple applications at different stages of the designing process.
This introduces a complex decision-making process early on and, because of this, some designs will not be filed at the right time or some designers will simply forgo filing a design.
IP Australia has proposed a two-step process consisting of:
- pre-registration filings: initially filing a low-cost preliminary application, then subsequently filing, within 6 months of the preliminary application, a main application which may include incremental changes made to the preliminary design; and
- post-registration linking: linking a subsequent main design to the earlier registered preliminary design.
Fig 2. Summary of the Proposed Two-step Process of Incremental Designs
By providing the first step of pre-registration filing, the designer is given ample time to optimise their design and so are less pressured to delay the filing of their designs.
The second step of post-registration linking makes sure that subsequent designs with incremental changes will not infringe on the initially filed main application.