The framework for design protection in Australia is reasonably unforgiving on businesses because, currently, rights are lost if a design is published before a design application is filed. But how do you know which designs are worthy of protection without market feedback?
There is one option that we use which can give you the added advantage of obtaining some market feedback before committing to further spending on design protection. Because this option better serves business interests, we use it with our clients during tough economic times and during the good times.
The ‘deferral’ option
In the normal course of events, if you have five different designs for example, you have the option to file five separate applications or to file a single application including all designs. In each case, you bear the official fees the attorney fees for all five designs at the same time, which is before product launch and before you have any market feedback.
Our option involves filing all the designs in one application without requesting registration or publication. This enables formalities examination to be deferred by 6 to 7 months and, once that examination occurs, there is a further two-month period for splitting designs into separate applications. While you still need to file one application in the first instance, the bulk of the costs associated with protecting multiple designs can be deferred by up to 9 months.
The 9-month delay will allow you to launch products associated with all of the different designs without affecting the validity of your rights. It also gives you time to assess the popularity of those designs by way of sales figures or enquiries or, in some cases, the emergence of infringements. Armed with that feedback, you can make better decisions on allocating your IP budget to protect some or all of your designs.
Even then, the process can be re-used by splitting out one design and then filing the remaining designs in a further application without requesting registration or publication, thereby further deferring some of the costs associated with pursing protection for those designs. This option can be continued for as long as you have multiple designs in one application.
Overseas design protection
While our ‘deferral’ option doesn’t defer the deadline for filing overseas design applications (6 months from the first Australian filing date), it also doesn’t affect the validity of your rights overseas – this is consistent with the standard filing strategy. However, once those overseas applications are filed, the ‘deferral’ option can be applied to them, but there are deferral periods between countries. For example, costs are deferred for longer in Europe and the United States, but less so in China on account of a shorter backlog of applications that need to be reviewed.
Change is coming
A current proposal for legislative change would allow businesses to file design applications up to 12 months after releasing a product. This would certainly make it easier for businesses to make informed decisions about filing designs. The details of this change are yet to be finalised, so we will have an update when draft legislation is released.
Depending on your business activities, the ‘deferral’ option may have a place in your IP strategy. It is important, however, to have the discussion internally about which designs are important to protect and have a discussion with your external advisors about a tailored approach that suits your business before you publish your new designs.
If you would like to find out more about how you can best protect your designs, please get in touch with our team.