How to patent a design in Australia & internationally

There are two key forms of Intellectual Property protection for the designs of new products:

• ‘Patents’ last for up to 20 years, can protect the functional details of a new product design and are the Australian versions of the ‘utility patents’ in the United States.

• ‘Registered designs’ last for up to 10 years, protect the unique aesthetics of new products and are the Australian versions of the ‘design patents’ in the United States.

How to patent a design in a nutshell

The process often starts with a provisional patent application followed by one or more non-provisional patent application(s) about 12 months later. The non-provisional application(s) will then be examined to check that the invention qualifies. A patent is usually granted shortly after an application passes examination. 

The key steps are outlined below and our full articles are here: How to patent an idea and Registered designs.

How to patent a design in Australia – 5 key steps

1. Keep it secret – generally speaking, it is important to the keep the invention secret until an initial patent application is filed, although Australia and some other countries have 12-month grace periods.
2. Assess the business case – take advice on the long term patent costs and the prospects of success: not everything that can be patented should be patented.
3. File an Australian provisional patent application – a starting point that reserves your priority to the detail you have invented so far.
4. File an Australian non-provisional patent application – filed up to 12 months after the provisional patent application to capture the original detail and any further detail that has been invented in the meantime, all in the one patent application.
5. Work with the patent examiner – Patent examiners will consider the invention and raise objections if in their view the invention is not new or is obvious compared to what was publicly known before the initial patent application was filed. It is routine to face objections and to respond with a combination of legal argument and amendments.

How to patent an idea internationally – 9 key steps

1. Keep it secret – generally speaking, it is important to the keep the invention secret until an initial patent application is filed, although Australia and some other countries have 12-month grace periods.
2. Assess the business case – take advice on the long term patent costs and the prospects of success: not everything that can be patented should be patented.
3. Search for similar pre-existing technology (optional) – To qualify for a valid patent, the idea must be new and non-obvious compared to what is already publicly known. Searching for relevant pre-existing technology is a prudent early step, particularly if you are aiming to patent in multiple countries.
4. File an Australian provisional patent application – a starting point that serves as an international place marker that reserves your priority to the detail you have invented so far.
5. Ask IP Australia to search for similar pre-existing technology (optional) – another due diligence step to minimise the risk of investing in patent applications that are doomed to fail.
6. File an international patent application (‘PCT Application’) – a single patent application that covers most countries and lasts until 2.5 years after the first patent application.
7. Work with the ‘international’ examiner – If an Australian files an international patent application, the Australian Patent Office will provide feedback and you will have an opportunity to respond. This is called the ‘international phase’.
8. Select and pay for the individual countries of interest – if you file an international patent application, you will need to select and pay for the individual countries of interest within 2.5 years of your first patent application being filed. This is called ‘entering the national phase’.
9. Work with the national patent examiners – Patent examiners in each country will consider the invention and raise objections if in their view the invention is not new or is obvious compared to what was publicly known before the initial patent application was filed. It is routine to face objections and to respond with a combination of legal argument and amendments.

How to register a design in Australia

Registering a design in Australia is straightforward. It starts by filing a design application with IP Australia. Usually, if the application is professionally prepared, the design will then be registered within a few months.

The design application must include at least one ‘representation’ of the design. In Australia, the representations could be photographs, renderings or drawings. Computer-generated images (e.g. from CAD packages such as SolidWorks) are often suitable for an Australian filing.

The design application may include a ‘Statement of Newness and Distinctiveness’ identifying visual features of the design that should be given particular regard.

The style of the representations and the wording of the Statement of Newness and Distinctiveness are key parameters that can be adjusted to ensure the registration focuses on commercially important features and the registration is more likely to be valid. Occasionally, for commercially important products, it may be appropriate to file more than one design application covering the same product in different ways.

How to register a design internationally

Protecting a new design internationally often starts with an Australian design application. Foreign design applications for the same design can then be filed up to six months later and ‘claim priority’ from the Australian design application, meaning that foreign design examiners will use the Australian filing date if and when they assess whether the design meets their local requirements for valid protection.

Further reading

Patent fundamentals

How to patent an idea

How much does a patent cost?

Registered designs