Filing a registered design application in Australia, a step-by-step guide

A product with a distinctive look is an asset the moment it exists, but the legal protection around that look only exists if you file for it. If you're about to take a product to a manufacturer, pitch it to a retailer or put it in front of investors, the design registration process is usually something you want started before any of that happens. A registered design protects the appearance of your product: its shape, configuration, pattern or ornamentation, and nothing else. It does not protect how the product works, and it does not protect your brand name or logo.

When the process is finished you will have two things. First, a registered design: an entry on the Register of Designs that IP Australia maintains, with your representations published on Australian Design Search. Second, if you ask for it, a certificate of examination that makes the design enforceable. That second step is the one most people overlook. Registration on its own does not let you sue a copycat. Under s 73 of the Designs Act 2003 (Cth) (the Act), infringement proceedings cannot be brought until the design has been examined and a certificate of examination has been issued. This guide walks through the whole path, from the paperwork you need before you file to the renewal that keeps the design alive.

What you need before you file

Almost everything that determines the strength of a design right is decided before the application is submitted. Work through this list first.

A product with a protectable appearance: Under s 5 of the Designs Act 2003 (Cth), a design is the overall appearance of a product resulting from one or more visual features. Section 7 defines visual features as the shape, configuration, pattern and ornamentation of the product. The feel of the product and the materials used in it are not visual features, and a design never protects how the product works.
Representations and a product name that match: Representations are the drawings, tracings, specimens or photographs of the product that show the design (s 5). You need enough views to capture the design, and the product name you nominate must match what the images show. Misalignment between the two is one of the most common causes of objections.
A statement of newness and distinctiveness: A short statement in the application identifying the visual features you claim as new and distinctive. It focuses the examiner, and later a court, on the features that matter to you.
Ownership sorted out: The application must be filed by the person entitled to be registered as owner. If employees or contractors created the design, confirm ownership in writing and record any assignment before you file, not after.
Fees: Filing online costs $200 for the first design and $150 for each additional design in the same application, per IP Australia's fee schedule. Postal filing costs roughly double.
A filing date that precedes public disclosure: Ideally you file before you launch, pitch or post images online. Australian law includes a limited 12-month grace period for certain disclosures, but it has conditions and traps, and it will not help you in countries without an equivalent.

Ownership, representations and timing are the items that trip people up, so they are the ones worth spending time on before you open the application form.

The registration process, step by step

The scheme runs in two stages. Stage one is registration: a formality check that takes a few months and puts your design on the public record. Stage two is certification: a substantive examination, requested when you need enforceable rights, that takes another few months. IP Australia's timeframes and fees page describes the process in exactly this order, and the steps below follow it. Filing online is the default and the cheaper route.

Identify the product and the design features to claim

Start by naming the product the way the market would describe it: portable speaker, reusable water bottle, office chair. Your rights attach to the nominated product, and the name appears on the public record. Then decide which visual features are genuinely yours and worth claiming. These are the features you will capture in the representations and call out in the statement of newness and distinctiveness.

Search for earlier designs

Before you spend money on filing, check whether a design substantially similar to yours is already on the record. Australian Design Search lets you search registered designs by product class. Search competitor catalogues and your own past marketing material too. If a similar design exists, you can adjust your representations to emphasise the features you actually own, or reconsider whether filing is worthwhile.

Prepare the representations

The representations are the heart of the application. They are what the examiner compares with earlier designs, and what a court will compare with an alleged copy. Practical points:

Use consistent line weights and shading, and keep the images free of visual clutter.
Include enough views (front, back, left, right, top, bottom, perspective) to capture the design fully.
Use solid lines for the features you claim and, where appropriate, broken lines to disclaim elements you do not claim.
Make sure the product shown in every view matches the nominated product name.

Professional renders or drawings are worth the money. Poor representations are the most common reason applications attract objections or end up protecting very little.

Draft the statement of newness and distinctiveness

The statement of newness and distinctiveness (SND) identifies the visual features you consider new and distinctive, for example the overall cylindrical form with a helical rib pattern and recessed base of a bottle. It matters more than its length suggests. Under s 19 of the Act, whoever decides whether one design is substantially similar in overall impression to another must have particular regard to the features identified in the SND. That includes the examiner at certification and the court in an infringement case. A precise SND concentrates the comparison on the features you care about.

File the application with IP Australia

The application is filed online through IP Australia's services portal, with postal filing available at higher fees. The application must meet the minimum filing requirements and include:

the representations;
the product name and classification (based on the Locarno system);
the statement of newness and distinctiveness;
the applicant's details and the filing fee.

One application can cover more than one design, provided each product belongs to the same Locarno class and the same person is entitled to each design (s 22). That is useful for variants of a product. Each design is treated separately for fees and examination. If the application does not meet the minimum filing requirements, you get two months to fix the deficiencies, and if you do not, the application is taken never to have been filed (s 24). The filing date matters for the 12-month grace period and for any overseas priority claims, so it is worth getting the application in on time even if the documents need polishing later.

Formality check, registration and publication

IP Australia checks the application against the formal requirements and assesses it, a process that usually takes about eight weeks. You respond to any issues raised. Once the design is registered, your representations are published on Australian Design Search, and the application documents, including the SND, become open to public inspection (s 60). From filing to registration you should allow at least three months.

A point worth flagging: under the current law there is no option to defer publication. The former publication option was removed by the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth), and the images in your application are published once the design is registered. If you need the product's appearance kept confidential until launch, file with that timing in mind rather than hoping to delay publication.

Request examination and obtain certification

Certification is optional until you need it. You generally request it when you want to enforce the design against an infringer, grant a licence with warranties, or give investors comfort. Anyone can request examination (s 63), not just the owner: if a competitor requests it, the examination fee is split between you ($250 each), and IP Australia warns that if you do not pay your share, your registration will cease.

When examination is requested, the examiner assesses whether the design is new and distinctive over the prior art base. Examination takes about 13 weeks. If the examiner is satisfied, a certificate of examination is issued (s 67). If objections are raised, you get the chance to respond by argument and by requesting amendments to the Register (s 66). Only after a certificate of examination is issued can infringement proceedings be brought (s 73(3)), and the relief a court can grant includes an injunction and, at the plaintiff's option, damages or an account of profits (s 75).

Renew at the five-year mark

The initial term of registration is five years from the filing date, renewable once for a further five years (ss 46-47). Renewal costs $400, with a late fee of $100 per month, up to a maximum of six months late. If the registration lapses, the consequences are serious: a design whose registration has ceased cannot be examined (s 63(5)), and no infringement proceedings can be brought for the period the registration was not in force (s 140). Put the renewal date in your calendar with a reminder six months out.

Where applications stall

The same problems come up again and again. Watch for these:

Disclosure before filing: Publicly showing the design before filing can destroy its newness. The 12-month grace period covers certain disclosures by the owner, subject to conditions and a formal declaration, but it is not a cure-all, and relying on it can jeopardise overseas protection.
Weak or inconsistent representations: Drawings that do not match the product name, or that mix solid and broken lines carelessly, invite objections and shrink the protection you end up with.
Vague product naming: A generic or wrong product name can misdescribe what is actually shown in the images.
Ownership gaps: Designs created by contractors or staff without an assignment can end up owned by the wrong person.
Forgetting certification: A registered but uncertified design cannot be enforced. If a lookalike appears, request examination promptly.
Missing the renewal window: A lapsed registration cannot be examined and cannot be enforced during the gap.

When professional help is worth it

The registration itself is a formality, but the decisions around it are not. A lawyer or registered attorney can:

run a proper prior art search and advise on whether the design is new and distinctive;
review your representations against IP Australia's formal requirements before you file;
draft the statement of newness and distinctiveness so it points at the features that give your design commercial value;
advise on filing strategy: one application with multiple designs, when to request examination, and how the grace period and publication timing interact with your launch plan;
respond to examination objections and prepare amendment requests;
put the ownership documents in place, such as assignments from contractors and employees, so the correct owner is recorded at filing;
map a filing schedule for overseas protection around your Australian filing date, since design rights are territorial and the priority window is short;
handle enforcement, including infringement proceedings and the risk of unjustified threats claims against you.

Getting advice early is cheaper than fixing a filing that protects the wrong thing.

What decides whether your design application succeeds

The single factor that most determines what your design application achieves is the quality of the representations and the statement of newness and distinctiveness you file on day one. The examiner tests the design against earlier designs by reference to those documents, and a court compares an alleged copy by reference to them (s 19). Everything else in the process, the formality check, the fees, the certificate, is administration. What you actually protect is fixed the moment you file. That is why the preparation matters more than the filing, and why filing before you disclose matters more than both. Get the images right, get the statement precise, and file early, and the rest of the process is straightforward.

The process in short: protect the look of your product, not its function. File before public disclosure, prepare strong representations and a precise SND, allow about three months for registration and another three for certification, request examination when you need to enforce, and renew at the five-year mark to keep the design alive to ten years. If you are not sure whether a particular feature is protectable, or whether your filing strategy suits your product line, take advice before you file, not after.