Patent or Design? Choosing the Right IP Protection in Australia

Differences Between Australian Patents and Australian Designs

 When launching a new product or bringing an innovation to market, protecting your intellectual property can be just as important as developing the product itself. Two common forms of registerable intellectual property protection are patents and designs. Although both provide their owners with exclusive rights and can prevent competitors from copying certain aspects of a product or innovation, they protect fundamentally different subject matter. They also involve different legal requirements, registration processes, enforcement mechanisms and periods of protection. Understanding the distinction between Australian patents and Australian designs is therefore essential when deciding how best to protect a new product.

What Each IP Right Covers

An Australian patent protects the functional or technical aspects of an invention. Depending on the nature of the invention, this may include a device, assembly, method, system, composition or similar. For example, a patent may protect a new mechanism that allows a machine to operate more efficiently, a new manufacturing process, or a composition that produces a particular result.

In contrast, an Australian registered design protects the visual appearance of a product. A design may relate to the shape, configuration, pattern or ornamentation of a product, or a combination of these visual features. A design does not protect how a product works, but rather how it looks.

Requirements

To obtain patent protection, the invention must satisfy specific legal requirements. Broadly speaking, the invention must be new and must involve the required level of inventiveness when assessed against what was previously known. The invention must also be sufficiently described in the patent specification so that the relevant technical features are properly disclosed. Patent protection is therefore primarily concerned with the underlying technical idea and how the invention functions.

A registered design must generally be new and distinctive when compared with the prior art. The assessment focuses on the overall appearance of the design and whether it is sufficiently different from earlier designs. Unlike patents, design protection is not directed towards technical functionality. Accordingly, where a particular feature of a product is solely dictated by its function, it may not necessarily be suitable for design protection.

Scope of Protection

Another important difference concerns the scope of protection provided by each right. The scope of a patent is principally determined by the patent claims. The claims define the monopoly in which protection is sought. A competitor may potentially infringe a patent even if its competing product has a completely different external appearance, provided that it incorporates the technical features falling within the scope of the patent claims. Conversely, a product may look similar to a patented product but not infringe the patent if it does not include the technical features required by the claims.

Design protection operates differently. In determining potential infringement, the focus is on the visual appearance of the allegedly infringing product and its similarity (or differences) to a registered design. Two products may perform exactly the same function and operate in substantially the same way without necessarily infringing one another’s registered designs if their appearances are sufficiently different. Similarly, a product with different internal mechanisms may potentially infringe a registered design if its overall visual appearance is substantially similar to the protected design.

Prosecution

Patent applications are subject to substantive examination before a patent can be granted. During examination, the application is assessed to determine whether it satisfies the applicable legal requirements, including requirements relating to novelty and inventive step. Enforceable rights are only afforded to a patent owner when a patent has progressed through examination and subsequently granted. It should be noted that examination on an Australian patent application must be requested within 5 years of the initial filing date (e.g., the PCT filing date or convention filing date) or within 2 months of the issuance of a Direction to Request Examination from IP Australia.

Australian design applications follow a different process. A design can initially be registered without substantive examination of its validity. However, registration alone does not mean that the design has been assessed and confirmed as valid. Enforceable rights are only afforded to a design owner when a design application has progressed through examination and subsequently granted. It should be noted that, in contrast to Australian patent applications, there is no deadline for requesting examination on an Australian design application.

Lifetime

The period of protection is another major distinction between Australian patents and designs. A standard Australian patent generally has a maximum term of 20 years from its filing date. Certain pharmaceutical patents may, in specific circumstances, be eligible for an extension of term. The lengthy duration of patent protection reflects the potentially significant investment involved in developing and commercialising technical inventions.

In contrast, an Australian registered design has a shorter maximum term of protection. A design is initially registered for five years and may be renewed for a further five years, providing a maximum protection period of 10 years. This reflects the fact that product appearance and consumer preferences can change relatively quickly.

Should You Consider a Patent, a Registered Design, or Both?

Patents and designs can provide complementary protection for the same product or invention. An entity may develop a product that contains both a technical innovation and a distinctive visual appearance. Patent protection may be sought for the technical mechanism, while design registration may protect the same product’s visual appearance. Using both forms of protection can provide broader protection against competitors who attempt to copy either the functional or aesthetic aspects of the product.

Ultimately, the choice between patent and design protection depends on the nature of the innovation and the aspects that provide its commercial value. Patents are suitable for protecting how an invention works and designs are suitably for protecting how a product looks. Therefore, it is important to consider both forms of protection at an early stage of product development, particularly before publicly disclosing or commercialising a new product. Choosing the right form or combination of protection can help ensure that the investment in developing a new product or innovation is properly protected and that valuable IP rights are not inadvertently lost.

If you have any queries or questions regarding patents or design, then please do not hesitate to contact our attorneys at MBIP.

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