Australian Registered Designs: Should You Request An Examination?

In Designs
1 March 2018

Australian Registered Designs – Is it a good idea to request examination?

In Australia, design applications proceed to registration without substantive examination.

Examination is optional and is typically only requested when pursuing an infringer. Consequently, many registered designs remain in force throughout their ten-year term without ever being examined.

For owners of registered designs, this allows examination, and associated costs, to be avoided, while still providing a registered right and thus a deterrent to anyone considering copying the design.

However, it should be appreciated that Australian registered designs cannot be enforced until after they have been examined and ‘certified’ by IP Australia. Further, any action taken against a potential infringer in relation to an unexamined and uncertified registered design may be regarded as an ‘unjustified threat’. This applies even if the infringer has flagrantly copied the registered design.

To Request of not to Request?

Design owners must therefore balance the convenience and economy of having a registered design albeit uncertified against the substantial limitations in the rights provided while it remains uncertified.

Is it a good idea to voluntarily request examination at an early stage?

Opinions and strategies vary considerably between design owners.

The Likelihood of Infringement Occurring

An important, if fairly obvious, factor to take into consideration, is the likelihood of infringement. If there is a high risk of infringement, then it would be preferable to apply for early examination of a registered design so that action can be taken without delay.

Moreover, where the risk of infringement is high, an examined and certified design might act as a sufficient deterrent to reduce this risk.

The Likelihood of Revocation

Conversely, when there is a known validity problem with a registered design (e.g., the known existence of a quite similar earlier design), then it may be sensible to avoid or defer the risk of revocation by not requesting examination.

In our experience, it is relatively uncommon for a design registration to be objected to based on earlier designs or products (other than those of the same owner). Accordingly, it is unusual for a registered design to be revoked based on a design that the owner did not (or could not) know about.

Of course, other than objections based on earlier designs or products, there are some instances in which the subject matter of the actual design is likely to result in an insurmountable objection being raised during examination. This is particularly an issue when the design relates to something intangible or transient, such as, e.g., an icon or image displayed on a computer screen. Designs based on such subject matter typically pass the initial formalities check, and therefore proceed to registration only to be revoked if examined. The Australian government has stated an intention to review this aspect of Australian designs law in the near future. We therefore recommend avoiding examination of such designs at present, and awaiting the anticipated change in law.

Time Required for Examination

A clear disadvantage of deferring examination is that it will delay the ability for a design owner to initiate (or even threaten) infringement action against a potential infringer.

In our experience, a design owner will generally receive a response from the Designs Office, be it an examination report or certificate of certification, within about three months from requesting examination.

It is, however, possible to request expedited examination, which will reduce the examination time frame from about three months to about six to eight weeks. Thus, in our experience, examination can be carried out, and certification usually achieved, fairly expeditiously when needed.

Other Commercial Considerations

In some instances, there may be other commercial considerations when deciding whether or not to request examination of a registered design.

For example, a design owner may wish to licence or assign their design registration. In such scenarios, having the design examined and certified might be a requirement of the potential licensee or assignee, and/or might increase the value of the design registration.

In a similar example, examination and certification may increase the value of a registered design, which may assist a design owner seeking investment in, or sale of, an associated business.

Another commercial consideration is the increased deterrent effect of a certified registered design as opposed to an unexamined, registered design.

Conclusion

Whether or not a design owner requests early examination depends on a number of considerations, including the risk of infringement, the risk of revocation and other commercial considerations. Put simply, however, there is no one solution that suits all, rather the decision as to whether or not examination is requested early, if at all, has to be considered on a case by case basis.

If you are a design owner struggling with this decision or if you have more general design queries, please contact IP Gateway Patent and Trade Mark Attorneys on 07 3808 3566 or email us at mail@ipgateway.com.au.

Disclaimer

This article is provided for general information purposes only. It is not a substitute for legal advice. Please contact us for case specific advice on all designs matters.