Designs Instruments Consultation

Overview

Introduction

Currently, after a design application has met its minimum filing requirements it proceeds to a formalities assessment. For these assessments, design applications are currently dealt with in part by the requirements in Schedule 2 of the Designs Regulations 2004. Schedule 2 will soon be repealed.

Schedule 6 of the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 provides the Registrar of Designs with the power to set formal requirements for documents in a design application by a written determination. A written non-legislative instrument of the Registrar will replace Schedule 2 from 10 March 2022.

The Act also provides the Registrar with the power to provide direction in a non-legislative instrument regarding forms for designs applications. This focuses on acceptable filing formats for documents. This instrument is separate to the more substantial draft Designs (Formal Requirements for Designs Documents) Instrument.

IP Australia’s draft Designs (Formal Requirements for Designs Documents) Instrument and draft Designs (Means and Form of Filing Documents) Instrument are now open for consultation and we welcome comments to refine and improve these.

We seek comments regarding the following: 

• the draft Designs (Formal Requirements for Designs Documents) Instrument
• other additional items not current part of the draft Designs (Formal Requirements for Designs Documents) Instrument but warranting further consultation and consideration
• the draft Designs (Means and Form of Filing Documents) Instrument.

Copies of these documents can be found at the bottom of this page. This consultation will close 30 November 2021.

What are the changes?

The Designs (Formal Requirements for Designs Documents) Instrument updates formal requirements, including meeting new technological advances. The proposed changes better reflect current office practice and clarify the application requirements for filers of a design.

Below is a summary of key new and clarified requirements:

• Requirement 5(1)(b) – An application filed with the office must include a contact telephone number
• Requirements 5(2), 6(7) – Requirements regarding common designs including: (1) statement that the design is a common design; and (2) simplifying provision of a separate sheet where representations are identical
• Requirement 6(3) – At least one of the representations in a design application must include a view of the design showing the product fully assembled without material extraneous to the product
• Requirement 6(5) – Representations must consist of one common image format, namely: (a) drawings; (b) photographs; or (c) images derived from computer-aided-design
• Requirement 6(12) – The Registrar may require that only a single reference or environmental view is included where there is uncertainty as to the design being applied for
• Requirement 8(3) – A representation must itself not contain a statement of newness and distinctiveness, or wording to the effect of a statement of newness and distinctiveness
• Various – Other requirements around clarity, in line with current practice but specifying as required.

We have also published a draft Designs (Means and Form of Filing Documents) Instrument which contains no substantial changes to means and form of filing a designs application. However, persons filing design applications may wish to take note of this instrument.

Other

Separate to the draft Designs (Formal Requirements for Designs Documents) Instrument we are taking this opportunity to seek your views and feedback on other detail regularly included in design applications. Proposed requirements are suggested and relate to unnecessary and irrelevant text being included as part of representations and in statements of newness and distinctiveness (SoNDs). This part of the consultation explains why creating formal requirements to address these issues may benefit applicants and more generally offer certainty to anyone viewing the particulars on the Register.

See below for more detail about this part of the consultation, again noting this is presently not included in the current draft Designs (Formal Requirements for Designs Documents) Instrument.

Why your views matter

Your views are important so that IP Australia can ensure the formal requirements for design applications strike the right balance between striving for clarity in applications and registrations whilst minimising regulatory burden and cost for applicants.

What happens next

This consultation commences 15 October 2021. The consultations closed 30 November 2021.

IP Australia will consider the feedback and integrate where appropriate.

The Designs (Formal Requirements for Designs Documents) Instrument will then commence 10 March 2022.

The Designs (Means and Form of Filing Documents) Instrument will then commence 10 March 2022.