Patents and registered designs are both types of intellectual property that can be used to protect new product designs and inventions. This article discusses the differences between these two forms of intellectual property and also explains how they can work together.

What is a patent?

A patent is a government-granted right that gives the patentee (i.e. the inventor or owner of the invention) an exclusive right to commercialise the invention. It provides the patentee a monopoly for a limited term to that invention, excluding all others. A patent can be obtained for a device, product, method, process or substance and protects the invention’s functions. To qualify for patent protection, the invention must be new, novel and inventive (or innovative, in the case of an innovation patent). For more information, please see our article on ‘Can I get a patent for my invention?’.

What is a registered design?

A registered design protects the visual appearance of a new product design. In order to be registrable, the design must be new and distinctive. A registered design can consist of a product’s shape, configuration, pattern, or ornamentation. Registered design rights are only relevant for physical products; they do not protect an idea or concept. For more information, please see our article on ‘What is a registered design?’

What are the key differences?

Whilst patent and registered designs are both forms of intellectual property that can protect new and invention products, there are significant and important differences. Outlined below are some of the key differences between these two complex forms of IP:

  • Scope of protection: There is a significant difference between the rights provided by a patent and a registered design. In essence, a product’s functionality, procedure, or mechanism can be covered by patent rights, whereas registered design rights can cover the visual appearance of a product. In some cases, a product may be eligible for both patent and registered design protection. In that case, these two registrations will protect different aspects of the same product.
  • Content of application: A patent application is a lengthy and technical document. It must include a title and a detailed description of the invention. Importantly, it also must include one or more claims defining the invention and the scope of protection. This is often accompanied by drawings to better illustrate the invention.
    In contrast, a registered design application primarily consists of drawings, or representations, of the design. Usually, these are simple line drawings (although they can be photographs) without additional detail or description. Aside from the representations, the only other key aspects of a design application are the product name and, sometimes, a statement of newness and distinctiveness.
  • Examination: Examination of an Australian registered design application is optional. It is possible to have a registered design without examination. However, a design registration cannot be enforced unless it has been examined and certified. Not requesting examination can be a useful strategy to delay costs, proceeding only with requesting when enforcement of the design is required.
    In contrast, patent applications are examined as a matter of course. A registered or granted patent is only achieved after successful examination and acceptance of a patent application. This commonly takes at least several years to complete
  • Cost: The cost of obtaining a registered design is generally far lower than the cost of obtaining a patent. This is largely because of the complexities involved with a patent compared with a design. In particular, the technical expertise in preparing a patent application is far greater than that of a registered design application, resulting in a far greater cost at the filing stage. Further, due to the high legal thresholds for gaining a valid patent, the examination process and timeframe can be detailed and lengthy, and hence costly.
    In addition, maintaining a granted patent requires payment of annual renewal fees (which get more expensive the longer the patent is in force), whereas design rights only require a one-off renewal payment after five years of registration.
  • Protection period: The duration of protection offered by both patents and registered designs is limited (unlike a trade mark which can be renewed indefinitely). Registered designs in Australia have a maximum term of protection of 10 years. In most cases, a patent has a maximum term of protection of 20 years, with the exception being for pharmaceutical substances, in which case the maximum period of protection is 25 years
  • Conventio.n period: In both the patent and registered design systems, it is possible to file a corresponding application for the same patent or registered design in another country which is signatory to a relevant international convention or treaty (for example, the International Convention for the Protection of Industrial Property, also referred to as the Paris Convention, and/or the Patent Cooperation Treaty). If a corresponding international application is filed within a certain ‘convention period’, it will be given the same priority date as the earlier filed Australian application. For registered designs, this convention period is 6 months, whereas for patents, it is 12 months.

NOTE: In some cases, it is beneficial to protect the one product with both patent and design registration. This can be the case where both the functionality of the product and the visual appearance of the product are worth protecting, and both elements are new and distinctive. If proceeding with both patent and design registration, careful consideration should be given to the timing of the applications, as it is imperative that the earlier filing of one does not destroy the novelty of the other.

Key takeaways

If you’ve developed something new, unique, and inventive, it’s important to safeguard your efforts. Patents and design rights are two types of intellectual property that protect new products in different ways. In addition to protecting different aspects of a product, designs and patents also differ in terms of cost, examination process and protection period. Primarily, it is important to put in place the right type of intellectual property protection for your product.

Actuate IP has a team of intellectual property experts who can assist with Patent Searches, Drafting, FIling & Prosecution and Designs Searches, Filing & Prosecution. If you require assistance, you can contact our team on 1300 851 138 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.

FAQs

Can I file both a patent and a registered design for my invention?

In some cases, yes. A registered design can protect a product’s visual appearance, whereas a patent can protect its functionality.

Is examination necessary for a patent and a design?

Examination is required for a valid patent registration. In contrast, the examination is not conducted prior to the registration of a design.