Designs: A unique system for protecting designs

The Australian Designs Act 147 of 2003 (New Designs Act) came into law with much fanfare in 2003. The New Designs Act aimed to broaden the scope of protection conferred on design owners. To qualify for registration, designs were required to meet a threshold of being new and distinctive when compared with the prior art base. This purported to raise the threshold of novelty required for registration when compared with the previous Designs Act, which required designs to be new and original. Under the New Designs Act a registered design is infringed by the exploitation of a design which is identical to or similar in overall impression to the registered design. While ambivalence has been expressed in some quarters about whether the objectives of the New Designs Act have been achieved, the new law has undoubtedly led to a more robust designs protection regime.

There are other aspects of Australian designs law that really give it teeth and increase its importance as a form of protection in the intellectual property landscape in Australia. The New Designs Act states that a visual (design) feature may, but need not, serve a functional purpose. Put another way the fact that a feature of a design has a functional purpose or has an appearance that is dictated solely by function, does not diminish its protection under Australian designs law. While there must be a specificity of form to enjoy designs protection, it does not matter whether or not that form serves a purely functional purpose.

This presents a clear point of difference over designs law in other major jurisdictions. For example the US designs patent law has a threshold requirement that a design must be ornamental for it be protected as a US design patent. Consequently ornamentality is the first issue that is considered when the validity of a US design patent is challenged. Many other important jurisdictions around the world also impose a similar requirement although it is sometimes expressed differently. For example European Community designs law does not protect features of designs that are dictated solely by function. While the precise tests may vary subtly from jurisdiction to jurisdiction, the threshold requirement that the features are not solely dictated by function is present in most countries. This underlying principle skews the designs protection regime in these countries towards aesthetic design rather than pure engineering design which is expressed by a three dimensional form.

In Australia, purely functional designs are just as registrable as ornamental designs and this point of difference opens up a plethora of opportunities to protect the design features of engineering products or articles.

We have identified some industries in which Australian designs law could be exploited to obtain protection of functional engineering products.

An inspection of the Australian Designs Register reveals that some designs have been registered and certified in these fields. However the number of registrations suggests that the system has been under-utilized. The key point is that the number of registrations is small when compared with the extensive product offerings in the marketplace and the level of innovation occurring in these fields.

Possible reasons for this include the following:

• many potential design applicants for functional designs may not be aware of the potential registrability of these designs. This situation could be exacerbated by the fact that much of this product design occurs overseas where design owners and their advisers are simply not aware of this aspect of the Australian Designs law.

• there is a widespread practice of filing convention design applications in Australia claiming priority from design applications filed in an overseas country such as the United States or Europe. In cases where the filing of the Australian design application is only considered after the priority application has been filed and after public disclosure of the design, the applicant's options are limited.

• a perception that the Australian design right is very narrow and consequently it is difficult to stamp out imitations.

• a perception that filing design applications in Australia is expensive. Often priority US design applications include several embodiments within the same application. By contrast in Australia each design application number protects only one specific and individual appearance. Thus several design application numbers may be required to protect all the embodiments present within the priority US design application. Similar considerations apply to European Community design applications which typically include several designs within the same application.

When filing for design protection, consider a design application in Australia separately from that in other countries. The protection of a design in Australia should be looked at separately from its protection in other countries. Related to this the Australian design application should preferably be filed before there is any public disclosure to avoid reliance on a priority claim under the Paris Convention. An over-reliance on filing under the Paris Convention is often detrimental to the pursuit of optimum design protection in Australia.

Applicants should consider filing multiple design applications simultaneously for related designs that vary from each other but are aimed at protecting the same underlying product. The cost of filing design applications in Australia is inexpensive with each application attracting an official filing fee of A$200 (US$216). Furthermore, Australia has deferred examination and the costs of examination can be deferred indefinitely, subject to the proviso that the design cannot be asserted until it has been examined. Thus the low cost of filing and deferred examination encourages the filing of several design applications to cover different design aspects of a product.

Applicants should also bear in mind that there is no requirement for a design owner to work or exploit each design that is the subject of a design application and registration. Further unlike the US the question of working does not influence the remedies available to a design owner for design infringement.

Apple and Samsung are currently engaged in a multi-jurisdictional dispute regarding their smart phone and tablet devices. In the United States, in the pending case of Apple Inc v Samsung Electronics Co (2011) a decision has been handed down on Apple's application for a preliminary injunction.

In one ground of attack on the Apple design patents, Samsung's Counsel argued that all of the Apple's design patents are invalid because they protect purely functional designs and do not meet a threshold onamentality requirement for design patent protection under US law.

Samsung itemised each of the design features in the Apple design patents and then went through them one by one and endeavoured to show that the purpose of each of the features was purely functional. For example the surface of the device is flat because it is easier to clean, and the corners are rounded to prevent snagging. Further evidence was led to show that the position of certain features was based on purely functional considerations.

In the preliminary injunction hearing, the Court appeared to reject these arguments, which is not surprising. While the designs are minimalistic they are not purely functional. The correct approach is to consider the design as a whole and determine whether the three dimensional form expressed by the design is dictated by the utilitarian function of the article.

There can be no doubt that the Apple designs constitute suitable subject matter for design registration in Australia. However this leads onto another interesting point that is more pertinent to Australian designs law, namely the construction of the US and Australian Apple designs under their respective laws.

In the case discussed above, Samsung argued that functional features should be ignored when construing the claim of the design patent thereby influencing the construction of the design.

However in Australia, solely functional features are viewed in the same way as ornamental features, as are features that have a shape which is partly dictated by the function they have to perform.

Accordingly, when construing a registered design in Australia these features are given equal weight and both contribute to the design. Thus the construction of the rights conferred by a design under US and Australian design laws might be quite different as a result of the differing substantive laws.

In the previous Designs Act, it was a common practice to illustrate some features of a drawing or some portion of the drawing in dotted lines. The purpose of doing this was to disclaim any protection for those features. The representations containing dotted lines were accompanied by the following statement of monopoly:

"Monopoly is claimed in the shape and configuration of design as applied to an article as illustrated in the accompanying representations. When constructing the extent of monopoly protection the features shown in dotted lines are to be disregarded."

This practice was effective in clarifying the purpose and effect of the use of dotted lines. Moreover it was very convenient when filing design applications originating from the United States and in Australia under the Paris Convention. The priority application received from the United States often contained dotted lines disclaiming features on the priority US design patent application.

However under the New Designs Act a design application no longer contains a statement of monopoly. The only statement that accompanies the application is a statement of newness. A statement of newness could be drafted to take into account the existence of the dotted lines as follows:

Newness and distinctiveness resides in the shape and configuration of a design applied to the article as illustrated in solid lines in the accompanying representations.

The effect of such a statement of newness and distinctiveness would be to focus the assessment of newness and distinctiveness on the features shown in solid lines in the representation of the design application. While this may produce a satisfactory outcome, it is important to realise that the effect of a statement of newness is quite different to a statement of monopoly.

In the absence of judicial guidance on the effect of dotted lines in representations filed under the new Designs Act it is preferable to avoid their use where practical. We prefer the use of minimalist drawings showing the illustrated features in solid lines.

In the Apple v Samsung case discussed above, a question arose concerning the use of dotted lines in one of the Apple design patent registrations.

In some of the Apple designs certain features were shown in the drawings in dotted lines but there was no statement in the specification disclaiming these features. The relevant USPTO practice note states that "unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof".

The arguments in the preliminary injunction hearing canvassed the implications of this omission and it will be interesting to see how this question is decided in this case. Failure to include this statement could have the effect that the features shown in dotted lines are deemed to form part of the design thereby affecting the claim scope. Some writers have also suggested that this could also result in the claim of the design being held to be unclear and therefore invalid under 35 USC 112. There is case law to the effect that "broken lines mean different things to different people" and "it must be made entirely clear what they do mean" or else the claim can be indefinite.

While this question has arisen in a jurisdiction that is quite different to Australia it makes clear the importance of careful preparation of the application and the alignment of the application with the applicable law and practice.

In a recent case in Australia under the New Designs Act, LED Technologies Pty Ltd v Roadshow Pty Ltd (2011), the alleged infringer argued that the subject design registration was impermissibly ambiguous and uncertain. The assertion centred around the lack of specificity in the statement of newness and distinctiveness and the quality of the representations. By any objective professional measure both the drawings and the statement were less than perfect. However the judge held that there was "nothing relevantly uncertain contained in the statement of newness and distinctiveness" and upheld the design.

Some observers have interpreted this decision as indicating that the courts will look benevolently on drawings that could have been better prepared and statements that could have been better expressed. However this decision could easily have been decided differently and a stricter jurisprudence could emerge in relation to these issues over time. It should not be interpreted as sign that a wide latitude will be permitted in the way that design applications are filed in the future.

Registered designs have assumed increasing importance in Australia since the introduction of the Designs Act 2003. With a greater awareness of the possibilities offered under the Designs Act, such as the ability to register solely functional designs, this trend is likely to accelerate.

Furthermore, despite the obvious differences between US design patent law and Australian registered designs law, there are currently parallels in the evolving law on both sides of the Pacific. Developments in themes such as functionality and the preparation of design representations with dotted lines and their influence on claim interpretation and validity make it an exciting time for designs attorneys watching developments in both countries.

Wayne Slater

Wayne Slater is the principal of IP Gateway and is a registered patent attorney with more than 20 years experience in intellectual property law. Wayne studied chemical engineering and practised as a chemical engineer before entering the field of IP law. He trained as a patent attorney in South Africa before moving to Australia in 1992. He has extensive experience in the following areas: identifying intellectual property and advising clients on strategies to protect their IP; preparing and filing patent and design applications including international patent applications; prosecuting patent and design applications in Australia; conducting patent oppositions in Australia; advising clients on validity and enforcement of patents and designs through the courts in Australia; and, conducting due diligence in relation to mergers and acquisitions involving IP. Wayne has given presentations on Australian IP law in the United States and Europe and has published numerous articles in internationally recognised journals in Europe and the United States on issues facing patent owners in Australia. Wayne is a fellow of the Australian Institute of Patent and Trade Mark Attorneys and the International Trade Mark Association.

Alison McMillan

Alison McMillan is one of Queensland’s leading patent attorneys with over 20 years experience in Patent Law. She began her practice with a leading patent attorney firm in Sydney before moving to Brisbane in 1995 and became the first woman in Queensland to be registered as a patent attorney. Alison has a PhD in Polymer Chemistry from the University of Queensland and practices over a broad range of technologies including organic chemistry; polymer chemistry; pharmaceutical chemistry and biotechnology. Alison represents a range of Australian and overseas clients in these technologies. She has prepared, filed and prosecuted patent applications to grant in Australia and internationally. She has successfully represented clients at opposition proceedings before the Australian Patent Office. Alison provides advice on all aspects of patent practice and law, including developing strategies to secure meaningful patent protection, validity, litigation, infringement and freedom to operate.