Year-on-year utilisation of the Registered Design system in Australia continues to gain momentum, with a 7% increase last year in filings, and notably, an impressive 32% increase in US-originating design applications in Australia.[1]
Accordingly, as more US applicants include Australia in their global filing strategies, it is worth remembering that Australian Registered Design practice differs in several important respects from the United States.
There are several procedural and substantive differences that can have particularly significant implications for both prosecution and the ultimate scope of protection. Understanding these differences before filing can avoid unnecessary objections and help preserve the strongest possible rights in Australia.
Differences in Australian Design Practice
One area where Australian practice differs is the treatment of reference or environmental views. Unlike many jurisdictions, IP Australia expects all representations of the design, even figures intended only to show the product in use or in its operating environment, to depict the claimed product consistently with the other views included in the application. Moreover, IP Australia may sometimes object to the inclusion of more than one reference view.
Therefore, although these reference figures do not themselves define the scope of protection in Australia, inconsistencies between them and the principal views nevertheless often attract examination objections.
Another important distinction concerns dashed-line features. US applicants are familiar with using dashed lines to completely disclaim portions of a design from the claimed subject matter.
Australian practice does not operate in the same way. Instead, dashed features remain part of the overall scope of protection. While one may impart reduced emphasis of such features by way of a corresponding Statement of Newness and Distinctiveness (SoND), a SoND cannot be used in Australia to entirely disclaim features shown in the figures, whether dashed or not. This seemingly subtle distinction can have meaningful consequences for both validity and enforcement.
Implications for US Applicants
These differences become particularly important when US applications are extended into Australia.
Where multiple reference views have been used in the United States application to show the subject design in use, subsequent extension into Australia may attract objections that those views cause uncertainty about the scope of protection being claimed. As a result, reference views that would be routinely accepted elsewhere may need to be reduced in quantity or omitted entirely before being filed into Australia, if the smoothest path to registration is sought by the Applicant.
Further, a design that relies on dashed lines in the United States to exclude certain features, for example, to avoid the applicant’s own earlier design or other closely relevant prior art, may not achieve the same scope of protection in Australia.
Accordingly, designs where the dashed features were intentionally excluded to avoid prior art require some careful consideration, because those dashed lines, once extended into Australia, suddenly form part of the scope of protection and hence may influence a consideration of validity or infringement.
The exact weight given to those features will depend on factors such as the state of the prior art and the designer’s freedom to innovate, but they cannot simply be assumed to be irrelevant or entirely disclaimed in the same way they would be in the United States.
Further, amending the figures to delete such dashed-line features post-filing may not be an elegant solution, as the Australian Designs Office may regard their deletion to be an altering or even broadening of the scope of the originally filed Australian design application. This can create its own set of further prosecution issues, and additionally, might place into question the exact validity or scope of the application during any later enforcement or validity proceedings.
For these reasons, US applicants and their attorneys should carefully consider how they use dashed-line exclusion when preparing their original US Design applications, and well before extending protection into Australia. This is of particular importance where dashed lines were used by a US applicant to strategically circumvent prior art, or where reference or environmental views form part of the original disclosure.
Coordinating the drafting of the original US Design applications with a trusted Australian IP attorney before filing might avoid unnecessary examination objections and help ensure that the Australian registration delivers the intended level of protection.
If you would like guidance on strategic filing of US-originating Registered Designs into Australia, please contact us.
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