Design today is a powerful tool for change, not just a tool for styling products and communications.

Design yin: protection of the form

In Australia, a design registration protects the overall appearance of a product resulting from one or more visual features of the product, which include: shape, configuration, pattern and ornamentation.

This can be seen by looking at examples of design registrations on the Australian Designs Register. For example, various design registrations owned by Apple cover the visual features of its iPhone product. However, in practice, product design often goes beyond appearance to performance and functionality (as anyone who has an iPhone can attest).

For this reason, Australian design laws appear to be out of step with reality. Should design registration in Australia be more in line with what industrial design seeks to achieve?

Patent yang: protection of the function

A patent registration protects the functionality of a product or method. This protection is enabled by a set of claims giving rise to a legal monopoly in an analogous way that the boundaries of a property as articulated by a licensed surveyor give rise to a land title.

A patent protects the combination of functional features (integers) that make up the product or method, not the overall appearance. Thus, a patent for, say, a new magnetically-supported chair with a back and two arms would protect any new magnetically-supported four-legged chair with a back and two arms, no matter what the chair actually looks like.

As with registered designs, details of patents lodged in Australia are publicly available (with some limitations) by searching the Patents Register.

For example, there is a large number of patents covering various functional features of the Apple iPhone – searching the Register for patents owned by Apple reveals the functional nature of patent protection.

When thinking about product design protection in Australia it is necessary to consider separately the product’s form and function. A design registration protects the form, while a patent protects the function.

Full protection using the yin form – yang function

The form (design registration) and function (patent protection) of a product both:

•  have to be new (novel or not known before the lodgement takes place as used in Australia or documented elsewhere in the world)

•  have to consist of one or more features of the product so that they interrelate in a specific way to make up the:

a  overall impression (shape, configuration, pattern; and ornamentation for a design registration); or

b  function in the form of device, method and/or system (through the combination of essential and inessential integers to claim a monopoly in a patent registration).

In addition, registration of a:

c  design has to be distinctive (form); and

d  patent has to be inventive (function)

A design is “distinctive” unless it is “substantially similar in overall impression” to an existing design from the standard of the “informed user”. The informed user is “a regular user … to whom the design is directed” and who would be aware of “‘what’s about in the market?’ and ‘what has been around in the recent past?’”.

In terms of a patent, a product is inventive if the combination of functional features was not obvious to a person “skilled in the art” – that is, not obvious to people with the same knowledge and experience in the field of the invention.

A patent registration provides broader protection than a design registration since a patent is focused on the functionality and performance of a product as described in words, not limited to its appearance as represented by drawings.

Harmony without stillness

So let’s get into a little bit of controversy here: can a website layout have registered design protection?

Readers may be aware of the recent controversy when Google was granted US design patent D599 372 (which is the closest US equivalent of an Australian design registration) for its iconic website layout – that is, the simple website that we are all familiar with.

There was a public outcry in some quarters – see, for example, “Who’s on crack in the patent office? Google Patents World’s Simplest Home Page...” and other interesting comments at http://bit.ly/5KzRtH.

However, many critics confused the US design patent registration with a utility patent registration (the equivalent of an Australian standard patent registration). Therefore, Google’s design patent is limited to protection of the ornamental features of its unique website.

Although the design patent was granted in September 2009, Google first took steps to get this protection back in 2003. Therefore, Google had the foresight to challenge the conventional wisdom of what registered design protection could cover and also to recognise the power of its simple design well before it was put to use. This challenge has now paid off for Google.

In Australia, a website layout is potentially protected by copyright. Whether the same frontiers can be pushed in Australia, remains to be seen.

Getting back to yin and yang

The comparison between design registration and patents illustrates the yin and yang of registered intellectual property (IP) protection for product designs.

Design registration (the yin) focuses on the overall appearance of a product design – this requires an appreciation of the whole picture. By contrast, patents (the yang) take a scientific reductionist view of each functional feature to obtain a linear, logical progression of features for grounding performance and functionality.

A patent can protect many “embodiments” of features (and arrangements within embodiments), giving broad protection for the functionality of a product design. By contrast, a design registration is limited to one combination of visual features giving rise to a product’s overall appearance.

Therefore, it would be advantageous for design registrations to cover different arrangements of visual features giving rise to a “substantially similar” overall appearance. This would give better protection against copycat product designs.

Possibly design registration can be enlarged as it has been in the USA to cover web page layouts and similar. In the interim, however, the Australian design registration system appears to be currently under utilised. 

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