Innovation Patents : The Final Curtain

The Australian Government is phasing out the innovation patent. Wednesday 25 August 2021 marks the beginning of the end of the innovation patent.

Why?

In 2001 the innovation patent was specifically introduced for the benefit of small and medium enterprises (SMEs) as a cost-effective means of obtaining patent protection. The Australian Government believes the innovation patent has not fulfilled its objectives for SMEs and has instead been misused by big businesses. Whether or not you agree with this sentiment, there is only a limited amount of time after which innovation patents will not be accessible.

Innovation patents in brief

Innovation patents form the second tier in a two-tiered patent system in Australia. By comparison to the standard patent, innovation patents have a shorter term of 8 years (the standard patent term is 20 years) and a lower inventive threshold requiring novelty and only an ‘innovative step’ to be enforceable.

An invention is taken to involve an ‘innovative step’ unless it only varies from the prior art in ways that make no substantial contribution to the working of the invention. This means that an innovation patent can be awarded for inventions that are obvious but make a substantial contribution to the working of the invention. By this test innovation patents are inherently easier to obtain and more difficult to invalidate compared to standard patents. The unpretentious innovation patent, in fact, confers quite strong IP rights.

For these reasons an innovation patent can play a strategic part in a patent portfolio.

25 August 2021

That is the final date by which an innovation patent can be filed. After 25 August 2021, innovation patents will not be permitted. And it will take 8 years for the last of the innovation patents to run their course to expiry.

The following summarises the strategies you can use to take advantage of the innovation patent system before it is phased out.

By 25 August 2021 you can:

              A.      File an innovation patent application. This includes a new innovation patent application, or an innovation patent application based on an Australian provisional application or a foreign convention application;

             B.      File a standard patent application and use it later to springboard an innovation patent.  A standard patent application filed before 25 August 2021, either directly or via the PCT, can be used after 25 August 2021 in two ways to nonetheless take advantage of innovation patent protection by:

    1.      Filing a divisional application for an innovation patent from the standard patent application; or
    2.      Converting the standard patent application into an innovation patent application.

The standard patent application must be pending or newly accepted at the time of division or conversion to an innovation patent application. And either way, the 8-year term of the innovation patent will start ticking from the filing date of the standard patent application.

What you need to do

If an Australian innovation patent could be useful to you or your clients, act now before you miss the boat. Our main take-home points are:

  • If you have an invention you are thinking of patenting, don’t wait; file an innovation patent application by 25 August 2021. This may mean skipping the usual step of filing a provisional application first.
  • If you have a pending Australian provisional application, you need to complete the application process by filing an application by 25 August 2021 for either an innovation patent or a standard patent.
  • If you have an overseas priority application, you need to file either a standard patent or an innovation patent application in Australia by 25 August 2021 claiming convention priority. Alternatively, you could file a PCT application designating Australia by 25 August 2021.
  • If you have a pending PCT application, you are safe for now because the PCT filing date is recognised in Australia as the filing date of a standard patent. Just be sure to enter national phase in Australia by the 31-month PCT national phase entry deadline.

For more information visit IP Australia here.

BOSH IP is an Australian IP firm specialising in strategic advice and management of patents and designs.

Patent Box

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.    

Attached is a link the announcement Budget.gov.au | 2021-22 Budget

Contact Us

If you would like to find out more about Patent Box, please get in touch with our team.

Need more time to make better decisions on design protection?

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.

Graphic

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.

Contact Us

If you would like to find out more about how you can best protect your designs, please get in touch with our team.

Beginning of the End for Australia’s Innovation Patent

The fate of Australia’s innovation patent has now been confirmed.  Last month, the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 received Royal Assent and finally set the timeline for the phasing out of the innovation patent in Australia.

What you need to know:

Before 26 August 2021:  No change to current system.  Innovation patents may be filed directly, or as divisional applications from pending Australian standard or innovation patent applications.

On or after 26 August 2021:  Innovation patent applications may only be filed as divisional applications from pending Australian standard applications or pending innovation patent applications for which the filing date of the parent is before 26 August 2021.

25 August 2029:  With the latest possible filing date for an innovation patent being 25 August 2021, the last day that any remaining innovation patents will expire is 25 August 2029.

A missed opportunity

The phasing out of the innovation patent marks the end for one of the strongest assets for offensive IP strategy.  The assessment of patentability against novelty and “innovative step” (a lower test than inventive step) made the innovation patent more straightforward to grant and very difficult to invalidate.  The ability for applicants to file innovation patents as divisional applications from a pending standard patent application made them perfect for directing at competitor products by including targeted claims.  Having all the same remedies available as a standard patent, the innovation patent was the weapon of choice for many patentees.

Surprisingly, the uptake on innovation patents has never been significant; something I have never quite understood, given the strength of these rights.  In 2018, the total number of innovation patent filings was only 7% of the total number of standard patents filed.  They were favored by Australian applicants: in 2018, AU residents filed around 51% of all innovation patents.  This compares with only 9% of standard patents being filed by applicants that are resident in Australia.   This huge differential suggest that international applicants do not appreciate the value of the innovation patent.  This is possibly a reflection of the more strategic conversations Australian attorneys have with their local clients.  In any case, it seems a missed opportunity for many international companies with IP interests in Australia.

So, what next?

The innovation patent was introduced in 2001 to provide an IP right for incremental inventions.  It was created to benefit SMEs by offering protection for a lower threshold of innovation, at a lower cost and greater speed to grant.  Recent reviews determined that it was not achieving its original policy objectives of encouraging innovation among Australian SMEs by offering protection for lesser inventions.

However, Government seems intent on helping small businesses gain access to the IP system.  One of the requirements of the Bill is that a statutory review be conducted of the accessibility of patents to SMEs, with a particular focus on the cost of applications and the processing times.

But is the answer to provide IP rights directed to assist one type of business or another?  I don’t think so.  The incremental invention was never only the realm of the SME, in fact many of the most impressive inventions we see come from our SME clients.  SMEs need to approach the IP conversation in the same way as larger more established businesses, benefiting from clear IP strategy which identifies their IP, understands how it produces value into the business and defines a plan for protecting and exploiting that value.  When patents are relevant they need access to the best protection available.

The demise of the innovation patent comes at a time when changes are being made to raise the bar for patentability of standard patents in Australia. Recently, support requirements were brought into line with European requirements and the Federal Government is considering recommendations to align inventive step requirements with Europe.  These changes are designed to improve the quality of patents granted in Australia.

It will now be more important for SMEs to find attorneys that have a considerable experience of the European patent system and a willingness to dive deep into understanding their business in order to support their IP requirements.

It will be interesting to see the results of the statutory review, but Government might better support SMEs by providing more accessible grant or incentive programmes to help them access the IP system, rather than by creating new rights.

Practice Note

So it is business as usual for the innovation patent for the next 18 months.  In the meantime, we recommend that applicants consider the innovation patent carefully as part of their IP strategy and the opportunities it presents.

If you have any questions about the innovation patent or if you would like to discuss any of your IP needs, please get in touch with our team.

World Intellectual Property Day

Happy World IP Day!

In case we needed an excuse, World IP Day gives us a chance to remind all our clients and friends of the importance of IP to your business.  Take an action today to ask yourself whether you have identified your IP assets and are protecting and managing them in a way that drives value into your business.  If you are unsure, let us know, we can help.

This year’s theme is IP in Sports and looks at how patents, trade marks, designs, copyright support the global sports ecosystem.

The scale of sports as a global business is incredible with around 2% of global GDP generated by the sports sector.  All participants in the sector are becoming acutely aware of the value of their IP: whether it is the English Premier League selling its domestic and international TV rights for a whopping £2.8 Bn per season, Nike holding ground as one of the most valuable brands in the world with a brand value of around USD 30 Bn or the constant improvements in technology and design in sports equipment to support continued improvements in performance.

https://www.wipo.int/ip-outreach/en/ipday/

 

Reference Views, Repeating Patterns and Common Designs: Insights into Australian Design Registrations

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.

Lock

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.

Car

Shirt

Box

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.

Bollard

Neckwear

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:

Byron.Bowman@bosh-ip.com

Nadia.Odorico@bosh-ip.com

Adrian.Sneary@bosh-ip.com

Nick.Hunter@bosh-ip.com

 

Is your business ‘investor-ready’? How to own the IP conversation during due diligence

If you are planning to take your business through commercial transaction, whether investment or M&A, get ready to be scrutinised.  For a target business, due diligence is one of the most uncomfortable periods of the transaction.

We regularly support clients through commercial transactions, and we have seen the approach to intellectual property (IP) due diligence change significantly over the years.  The days of quietly providing a list of registered patents and trademarks in a data room, only for their status to be checked, are gone.  Questions around IP come up in almost every investor pitch I attend.  The value of intangible assets is starting to be better understood and a rigorous assessment of all IP assets, beyond registered rights, and their contribution to the business is becoming the norm in commercial transactions.

For any company looking to exit or attract investment, it is critical that you own the conversation around your IP during the transaction.  It is rare that no queries arise, but solid preparation for the IP discussion will put you on the front foot and drive confidence throughout the engagement for both sides, leading to a better outcome.

Here are our IP Top Tips to position you to own the IP conversation during due diligence.

1.  IP Audit – do it early

It is rare that we cannot improve your IP situation when working towards an exit/investment event.  Even the best executed IP strategy can often be optimised when a commercial transaction is being considered.

However, improving your position can take time.  Engage your patent attorney early to reduce stress and improve focus.  These plans tend to be better thought out when you are out of the spotlight.

Early consideration gives you time to update registers, chase signatures, update contracts, file new IP, extend your registered IP across additional jurisdictions and, in many cases, locate your IP!

2.  Identify your IP and tell your story

Correct identification of your IP is obviously critical to preparing for investor conversations.  It is more than a list of patents, designs and trademark registrations.  Understand where the IP value is in your business.  Look at your software products, your know how, your contractual relationships, your people, your data and your brand.  Identify it and retrieve it so it can be provided during the transaction.

How does this IP support your business model and provide differentiation?  You must be able to map your IP against your products and services and understand how that drives value legally and commercially.  Can you back it up quantitatively as well as qualitatively?  Can you demonstrate that competitors are having to design around your IP?  Have you exploited it in licensing deals?

It can be hard to attribute any value to IP which does not map against your business model.

3.  Ownership

Ownership is explored in even the highest-level due diligence investigation.  Do not ignore it.  Queries around ownership are one of the most common problems during IP due diligence and regularly cause panic.

If you cannot prove you own the IP there is immediate uncertainty as to whether you have the right to use it, raising a flag on the transaction.

For all IP, identify who created it, when, and in what circumstances.  What agreement was that individual working under when it was created, and does it assign any IP created to you?

Resolving ownership queries or disputes can be complicated.  Even retrieving signatures from ex-employees can take time and you can face extreme difficulties if the company previously owning the IP is no longer live.  The sooner you resolve these issues the better.

Once you have established a clean line of ownership ensure public records are updated.

4.  Is your IP valid?

You would be surprised at how many times registered IP rights listed on schedules have been allowed to lapse or are vulnerable.  Ensure all maintenance fees are up to date if you want to retain any credibility in the IP conversation.

In the months leading up to the transaction review the status of your IP.  Is the scope of protection consistent across different countries?  If not, why not?  Does it question the validity of the rights in certain jurisdictions?  If you have rights which are deep in examination is there value in trying to accelerate grant before due diligence?  Are your IP assets in a vulnerable time period, for example is the opposition period open?

There is a perception among some that a pending application can have more value since the new owner will have the freedom to control the scope.  But it also leaves uncertainty.  Perhaps a granted patent and a pending right would provide certainty and opportunity, hence greater value?

Finally, if you plan to attribute significant value to a registered right, the question will always arise of how defensible that right is.  Relying on patent office approval is a first step but a more robust validity analysis can provide more confidence and give you a chance to amend any patents before scrutiny if necessary.

5.  IP contamination of products and freedom to operate

Commercial dynamics around products change as the parent company grows.  Are you certain that you have an unencumbered right to use your products?  Any IP infringement or licence agreement might have different implications in the hands of a new owner.

Consider running a freedom to operate investigation around your product.  If you are operating under licence, check the licences are transferable?

6.  Preparation for engagement

Once you have completed the processes mentioned above you are ready to uncover your IP position for due diligence.  You should now be ready to handle the IP conversation confidently during investor pitches and commercial discussions, at least on a high level.  Be sure to keep your IP team engaged throughout the process and bring them in to cover any detailed questions.

 

Our expert patent attorneys at BOSH IP have considerable experience in leading our clients through investment rounds and M&A transactions.  Contact us for more information on how we can help you prepare your business for IP due diligence and position you to own the IP conversation.

 

 

The Most Important Person in the Room

As business owners, we are always learning from the leaders of the biggest brands in the world.  Recently I have been studying Jeff Bezos and Amazon.  Without any doubt my biggest lesson from Bezos is his complete obsession with the customer.

At meetings, Bezos famously leaves one chair at the table empty to remind everyone who is the most important person in the room, the customer.  Customer obsession is a core value at Amazon and has been central to its meteoric success.

So what does customer obsession look like in the IP sector?

Customer experience and customer satisfaction are central to our client engagement at BOSH IP.  But as IP advisors with a commercial perspective we aim to do more.  Our goal is to help our clients maximise the value from their IP.  We obsess about helping our clients use IP to drive value into their businesses.

For us, customer obsession means taking ownership of the IP conversation.  Taking responsibility for understanding our clients’ needs and identifying fit for purpose solutions.  We lead our clients through the IP discussion by exploring beyond their technology to understand the context around their innovation.  Using our IP expertise along with our understanding of our clients’ business, we identify how our clients can use IP to underpin their business model and drive real value to their business.

Often this results in presenting options and recommending actions different from those which the client expected.  We have clients which ask for patents for new innovations with a clear scope of protection in mind.  On reviewing the client’s situation, business model and technology we often find that an entirely different course of action is more appropriate for them.  For example, we may recommend proceeding with a patent with different scope, we might recommend proceeding with a competitor analysis to quantify the risk of market entry, or we may recommend not filing a patent but explore options around confidentiality.

When clients commit to an IP program they understand why they are taking the actions we have recommended and how it will help maximise value from their IP.

Taking ownership of the IP conversation and taking responsibility for finding fit for purpose solutions to drive value from IP is how we show customer obsession.  How do you demonstrate customer obsession?

If you would like to find out how we can help you use IP to drive your commercial advantage, please get in touch.

Protecting Functional Features, and What’s in a Title: Insights into Australian Design Registrations

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.

Electronic game

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.

Salad spinner.png

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.

Wooden puppet

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.

Chair

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:

Byron.Bowman@bosh-ip.com

Nadia.Odorico@bosh-ip.com

Adrian.Sneary@bosh-ip.com

Nick.Hunter@bosh-ip.com

Insights into Australian Design Registrations

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.

Bottle images x3

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:

  1. the state of development of the prior art,
  2. functional features of the design that may be important from a practical perspective, and
  3. 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