Enhancing Australian Design Protection

Stakeholders broadly supported protecting virtual designs. IP Australia intends to proceed with the proposal to protect virtual designs, including user interfaces, and product elements only visible when the product is in use. Key changes and refinements considering stakeholder comments include:

• refining the proposed new definition of virtual products. 
   
• permitting the filing of an application for a design applied to both a virtual and a physical product at the same time. 
   
• permitting video files or animations to be used as supplementary representations for dynamic designs. 
   
• ensuring that an owner of a virtual design right can bring infringement proceedings against the seller of a virtual product (not the customer or end user).
   
• excluding protection for non-physical virtual products that solely express an idea or entertain with no useful (functional) application, such as films, or video game content which are more appropriately and adequately protected by copyright.
   
• steps to ensure that copyright protection is not lost when virtual designs are registered or commercialised. 

Stakeholders also broadly supported introducing protection for partial designs. IP Australia intends to proceed with the proposal to protect design innovation for parts of whole products made in one piece. Key changes to the proposal considering stakeholder comments include: 

• ensuring that separate parts of a product can be registered as one design. 
   
• applying the current requirement for whole designs to identify a physical product that the part relates to so that it can be classified.
   
• assessing validity and infringement of partial designs in the same way as they are assessed for whole designs now. We will not proceed with the ‘similar products’ proposals in the consultation paper.

Stakeholder support for preliminary designs was mixed. Some supported the flexibility of the proposal. However, others identified difficulties in obtaining protection overseas, complexity, and impacts on third parties. Given these concerns, IP Australia does not intend to proceed with the preliminary designs proposal at this time. 

Stakeholders broadly supported post-registration linking. IP Australia intends to proceed with this proposal to allow designers to protect their designs as the develop their products throughout the design lifecycle. Key changes to the proposal considering stakeholder comments include: 

• reducing complexity by having linking occur only during examination. 

• requiring linked designs to always have identical owners. 
   
• only requiring linking to the earliest substantially similar design (not the earliest design in the chain) meaning more of the subsequent design’s term is preserved. 
   
• permitting linking of identical designs for virtual and physical products (if not applied for together).