BOSH IP is a full service Intellectual Property (IP) law firm with offices in Sydney and Melbourne. Our patent attorneys bring a commercial approach to IP.
The Australian Federal Government announced on 11 May 2021 a tax-based incentive scheme called “patent box”. The scheme allows Australian companies who derive profit from patented technology in the fields of the medical technology and biotechnology to a reduction in the company tax rate from 30% to 17%, or for SMEs a reduction from 25% to 17%.
Criteria
The scheme has a commencement date of 1 July 2022 and whilst some of the fine print is still yet to be released, the eligibility criteria is:
The profit must be derived from the patented technology. Profit derived from branding or other marketing is not eligible.
The technology needs to be medical or biotechnology that is covered by patents filed after 11 May 2021.
The patents need to be granted in Australia.
The scheme is designed to stimulate R&D and, importantly, stimulate business growth in these sectors. The timeframe to achieve both can vary from company to company.
Existing Portfolios
Businesses with existing patent portfolios can also take advantage of the scheme, provided they meet the criteria. New standard applications could be filed for incremental developments, and innovation patents could be filed before 25 August 2021, after which the innovation application will not be option. BOSH is investigating is whether divisional applications filed after 11May 2021 are eligible.
There are a number of options to help businesses with existing portfolios and BOSH will be making the most of these opportunities for clients in meditech and biotech.
The Federal Government is also considering whether the scheme can be extended to cover other technology sections, including clean technology. Bosh will keep you updated.
Our previous blogs have looked at the assessment of multiple embodiments that are typically identified by portions of solid lines and dashed lines (or broken lines). For jurisdictions like the United States of America and Japan, the portions shown in dashed lines can be disclaimed from the monopoly which enables the scope of the registrations to be easily varied.
Dashed lines are allowed in Australia, but cannot be disclaimed. The previous blogs have looked at how this can impact on the way design applications can be prepared in Australia, including title selection and Australia’s unique practice with respect to protecting functional designs.
This blog looks at consolidating the number of design registrations required when the drawings show multiple embodiments and discusses how a single registration can include:
different environmental features,
a common design applied to different products, and
products having indefinite dimensions.
Reference views; how they can impact on the number of design registrations required?
The visual features of a design can be enhanced by illustrating the product in the environment in which it is used. This provides a context for the design which can assist in identifying more prominent features and the orientation of the design in its environment, without the environmental features limiting the scope of protection.
So rather than disclaiming features, which is not possible in Australia, one approach is select an appropriate title and represent the environmental features differently to the visual features of the product. When the environmental features are not physically attached to the product this can be straightforward. The reference views below are of a LOCKING SYSTEM HOUSING having environmental features in the form of either a knob or a handle that are attached to the product. The environment features exemplify possible uses of the circular features in the centre of the HOUSING in Figure 1.
Reference views can be used to illustrate environmental features that may have been disclaimed in other jurisdictions. Moreover, the number of registrations required can be consolidated without impacting on the scope of protection.
How can common designs be protected?
It is possible to obtain protection for the same design in relation to more than one product (section 22(1)(b) of the Designs Act) in a single registration rather than obtaining separate registrations for each product. This can provide considerable cost savings. The examples below illustrate that the same design can relate to 2 dimensional features and/or 3 dimensional features.
In the last example, the physical differences between the blank and a box made from the blank necessitates that different features of the designs, although embodied in each product, are showcased differently in each product.
The product may have any length or have a repeating pattern
The number of registrations required can also be consolidated if the difference between products varies according to a dimension or has a repeating pattern.
The definition of a product includes products having one or more indefinite dimensions provided either: i) the product has a constant cross-section in the dimension that could be varied; or ii) the product has a pattern or ornamentation that can be repeated (section 6(3) of the Designs Act).
The examples below illustrate how a registration can be broadened to cover a number of embodiments of different lengths.
Conclusion
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. With this blend of considerations, we drive your IP from a commercial perspective.
Contact us
We are recognised experts in designs. For specific advice, please contact us at:
Last week’s blog covered the assessment of multiple embodiments, and what this means to so-called multiple design applications and single design applications. Specifically, the drink bottle in last weeks’ blog is an example of multiple embodiments depicted by different portions illustrated in dashed lines. Multiple embodiments of the product can also be depicted by illustrating the product in different positions, such as when the product can move and has functionality.
Duplicating what has happened overseas in Australia is often not an option, or is not the best option, particularly when obtaining separate registrations for each embodiment is not commercially viable. To get the most out the Australian design registration, title and functionality are two things to consider, and here is why.
What is it about functional features?
One of the unique aspects of Australian design law is that a visual feature may or may not serve a functional purpose (section 7(2) of the Designs Act). A single registration can therefore be obtained of a product that is illustrated in different positions and performing different functions. This provides a significant opportunity to consolidate the number of registrations required to a smaller number that focuses on the important positions of the product. The important positions are typically those that are seen in its different modes of use.
Electronic Game
For example, the opened and closed positions of a portable computer can be protected in a single registration. This can be particularly useful when the newness of the design is a combination of visual features on the inside and the outside of the product.
If the visual features of either the inside or outside are less important to the new design, these features can be shown in dashed lines whilst still showing that the product moves between open and closed positions.
Salad Spinner
Functionality can also be depicted by the product being illustrated in assembled and exploded configurations, such as the salad spinner below.
As the visual features resides in the way that the components of the salad spinner fit together, it is not necessary to illustrate six views of each component.
Wooden Puppet
The functionality of the joints of a wooden puppet can be illustrated in a single design registration. Photographic representation such as those set out below can form the subject matter of a single design registration. This is particularly useful when the mobility of the joints contributes to the newness of the design.
The scope of a registration that contains functionality is determined by what is shown in the drawings, namely functional features and non-functional features. To avoid overly limiting the scope of the registration, when it comes to functional features, the best approach is to illustrate a combination of positions that:
i) could contribute to the novelty of the design, and
ii) would be positions that a competitor’s product is likely to have.
Should the title be changed to suit Australia?
Figures 1 and 2 are typical examples of two embodiments of a CHAIR that are the subject of a single design application initially filed outside of Australia. The scope of protection provided by the figures is clear from the dashed lines. Moreover, in some jurisdictions, but not Australia, the dashed lines in Figure 2 could be disclaimed.
So how can equivalent protection be achieved?
One approach is to use CHAIR as the title in separate registrations of Figures 1 and 2, and to call for the dashed lines in Figure 2 to be afforded less weight than the solid lines. However, this does not equate to disclaiming the part shown in dashed lines.
To achieve equivalent protection, the title of the product in Figure 2 could be instead be BACK REST AND SEAT so that the focus is on the product shown in solid lines only. The base and subframe of the CHAIR shown in dashed lines would, in this situation, constitute environment features, which do not form part of the named product and therefore ignored from the scope of the registration.
In other words, protection of equivalent scope can be achieved in Australia by changing the title.
The title can be changed to identify any product, provided the product is something that is manufactured or hand made. Section 6 of the Design Act prescribes that the title of the product can be any part of a complex product, such as a back rest and seat of a chair which is made separately from the frame and subframe.
Our approach
At BOSH IP we aim to get the most out of the design registration system with a view to the best practice in Australia and the commercial relevance of the design.
Contact us
We are recognised experts in designs. For specific advice, please contact us at:
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:
