For foreign practitioners coordinating international design protection, the publication of an Australian design can have consequences for a client’s wider filing and product launch strategy, particularly if client’s are not aware of the speed at which Australian designs can become published.
When instructing an Australian filing, it is therefore useful to identify any requirement to maintain confidentiality and consider how the timing for publication of an Australian design fits with the client’s commercial plans. The options for delaying publication are limited, particularly where the application claims priority from an earlier overseas filing.
What triggers publication of an Australian design application?
Two actions trigger publication of an Australian design application:
- Filing: upon filing, bibliographic information about the application (including the product name, priority data, filing date, owner name(s) and designer name(s)) is immediately published by IP Australia.
- Requesting registration: when registration is requested, the application will undergo a formalities assessment, and, provided the relevant requirements are satisfied, automatically proceed to registration. The representations showing the design itself are then published by IP Australia.
Where registration is requested at filing, the application can proceed to registration and publication quickly. IP Australia currently indicates that formalities assessment usually takes around eight weeks, although actual processing times vary. Applicants should therefore consider publication timing before filing, rather than assume that the application will remain confidential until the product is ready for release.
Examination for newness and distinctiveness is a separate process, which must be requested and successfully completed before a registered design can be enforced. Accordingly, an application does not need to undergo substantive examination for it to become publicly available.
Options for delaying publication
To delay publication, an applicant for an Australian design may choose not to request registration when filing the application.
Australian design applications filed without requesting registration, are able to remain pending for a period of 6-months from the priority date of the design, at which time they are automatically deemed to have requested registration and then proceed to formalities assessment, and then publication post formalities assessment.
However, if an application claims convention priority from an earlier overseas application, this will not afford the applicant much of a delay, as the deferment period is from the priority date, not the filing date of the Australian application.
While this approach provides some ability to delay disclosure of the design, it does not give the applicant an unrestricted choice of publication date afforded to applicants in other jurisdictions.
The significance of the priority date
For an Australian application claiming priority from an earlier overseas application, the six-month period for requesting registration runs from its priority date. Filing in Australia does not start a further six-month period.
For example, an applicant may file a European Union design application with deferred publication, and subsequently file a corresponding Australian application close to the end of the six-month priority period. By that stage, most of the period available for potentially delaying publication of the Australian registration request has already elapsed. The Australian application may therefore proceed to registration and publication well before the publication in Europe.
Do I have any other options to delay publication?
Where an earlier overseas application remains unpublished, an applicant may consider filing in Australia without claiming priority from that application.
The Australian filing date would ordinarily become the priority date, allowing the applicant to withhold the registration request for six months from that date. For an Australian application filed near the end of the overseas priority period, this could provide close to six additional months before registration is deemed requested, compared with claiming overseas priority.
However, the additional time comes at the cost of the earlier priority date. Newness and distinctiveness would be assessed immediately before the Australian filing date, rather than the overseas filing date. Delaying the registration request does not move this assessment date further forward.
The principal risk is intervening prior art. A relevant design independently published by a third party anywhere in the world, or publicly used in Australia, between the overseas filing and the Australian filing could prevent the Australian design from being validly protected. Earlier-priority Australian design applications may also become relevant when subsequently published, even if they were not publicly available when the applicant filed in Australia.
Forgoing priority may therefore be an option where confidentiality has been maintained and later publication is commercially important. It does however require careful assessment of the benefit of additional time against the risk of losing valid Australian protection through intervening prior art.
Practical considerations
Publication on the Australian register makes the design available to competitors and other interested parties. The representations may reveal the appearance of an unreleased product and may be reproduced in industry reporting or online commentary. For a business coordinating an international launch, disclosure in Australia can therefore affect its commercial plans beyond the Australian market.
Before instructing an Australian filing, foreign practitioners should consider the following with their client and Australian associate:
- The intended launch date: Confirm when the client intends to disclose the product and whether earlier publication would create a commercial concern.
- The priority date: Calculate the time remaining before an Australian registration request will be deemed made.
- Filing instructions: Identify any confidentiality requirement expressly and discuss the available timing options with the Australian associate before filing.
- Corresponding applications: Confirm the publication status and anticipated publication dates of the European, US and other corresponding applications.
- Priority strategy: If forgoing priority is being considered, assess the disclosure history and intervening prior art risks with the client.
- Changes to launch plans: Notify the Australian associate promptly if the product launch is postponed.
For foreign practitioners, early coordination with the Australian associate can help identify whether the client’s confidentiality objectives are compatible with retaining convention priority, and whether any alternative filing approach warrants consideration.
If you are advising on an Australian design filing and would like further guidance on publication timing, priority claims or coordinating protection with your client’s product launch, please contact the Madderns patents team. We can assist you in assessing the available options and the implications for your client’s Australian design rights.
