Written by The Australian consumer market is dominated by overseas originating designs and this is reflected in the design applications filed at the Australian Designs Office. In 2018, more than 7,500 design applications were filed in Australia and approximately 55% of these claim convention priority from overseas design applications, and the other 45% were either non-convention applications or divisional applications. Divisional applications can also claim convention priority indirectly.
What this means is many Australian design applications are based on the drawings of overseas design applications, and may therefore contain multiple embodiments, sometimes as many as 10 or 20 embodiments to the same product. If the same drawings are filed in Australia without taking this into account, the Designs Office will raise a formalities objection, giving the applicant 2 months to overcome the objection. Otherwise the application lapses.
Over the next few months, we will release papers on some of the techniques used by BOSH IP to optimise the number of registrations required from a best practice perspective and from a commercial perspective. We provide our Top Tips and recommendations in each edition.
Multiple Embodiments equals Multiple Designs
It is common practice for drawings of a design application to include some portions in solid lines and other portions shown in dashed lines (or broken lines). But the reasons for using dashed lines vary. For jurisdictions like the United States of America and Japan, the portions shown in dashed lines can be disclaimed from the features defining the monopoly. In other jurisdictions like China, dashed lines not permissible at all.
Dashed lines are allowed in Australia but they cannot be disclaimed. A design is assessed from the overall appearance of the product, including solid lines and dashed lines. The portions shown in dashed lines cannot be ignored, but rather they are afforded less weight. Embodiments having different portions of solid and dashed lines will therefore have different scopes, and the Designs Office will require that separate registrations be obtained for each embodiment of different scope, unless an alternative filing technique can be found.
Below are three embodiments of a drink bottle having different portions of solid lines and dashed lines. Each is therefore different in scope.
In addition to the way in which the product is illustrated in the drawings, applications may include a Statement of Newness and Distinctiveness (SoND) which influences the importance of the features.
Embodiments of different scope will require separate registrations, but how do I get the most out of the Australian design registration procedure?
Can multiple design applications be filed? Answer: YES… BUT….
When separate protection is warranted for each embodiment, a so called “multiple-design application” can be filed for:
- multiple designs of the same product, such as the drink bottle example; or
- multiple designs of more than product, if the products belong to the same Locarno class.
A point to note about “multiple design applications” is that there is no discount in the official fees based on the number of designs, and that separate registrations are ultimately issued for each embodiment after a formalities check, which can occur within 4 to 6 weeks after an application has been filed. This means that each embodiment is handled on a case-by-case basis post registration, including requests for substantive examination, renewal fees, and recording changes of ownership, to name a few examples.
So the answer is YES a multiple-design application be filed, BUT there is often little or no benefit in filing a multiple-design application, and we often recommend filing separate applications from the outset for each embodiment.
The advantage this provides is that we have direct control of the figures in each registration, the Statements of Newness and Distinctiveness can be adjusted for each application, sometimes the title can be selected for each embodiment, and there is no difference in the official fees.
Can all of the embodiments be included in a single application? Answer: YES…BUT…
YES a single application containing multiple embodiments can be filed, BUT ultimately, a selection must be made on which embodiment to retain, and which to make the subject of a divisional application. A single application containing multiple embodiments can be advantageous if the applicant wants to:
- defer the decision on whether each embodiment needs protection; and
- defer the cost for registering each embodiment.
If the applicant is yet to be briefed on the application procedure, the response period of 2 months allows sometime, albeit limited, to discuss whether registrations are need for all embodiments.
In consultation with you, we can provide recommendations on which embodiments to prioritised in view of a range of factors, including:
- the state of development of the prior art,
- functional features of the design that may be important from a practical perspective, and
- importantly, visual features that distinguishes the design from competitors’ designs.
In addition to prioritising which designs to protect, it is possible to customise applications to better suit Australia so that registrations for each embodiment may not be required. These and other factors will be considered in more detail in the coming editions.
Our approach
At BOSH IP we optimise the number of design applications required, with a view to the best practice in Australia and the commercial relevance of the design.
Our patent attorneys are recognised experts in design protection. For specific advice, please contact us at:
byron.bowman@bosh-ip.com
nadia.odorico@bosh-ip.com
nick.hunter@bosh-ip.com
adrian.sneary@bosh-ip.com