This is the third article in a series outlining practical tips to help reduce IP portfolio expenses without compromising the protection of your IP. Our first and second instalments focused on patents included 9 tips (cumulatively) aimed at helping IP rights-holders keep more cash in their pockets. In Part 3 we provide capital-saving tips for design applications.
Tip 10: Delay design application filing
We recommend delaying the filing if you’ve been considering a design application. The final form of any design is often not completely settled until close to the day of launch. Thus, the design application filing could be delayed at least until just before the intended launch date.
If the design is still likely to change after launch, consider (carefully and with advice) whether the design application can be delayed until the final design form has been settled.
As with patents, one disadvantage to this strategy is the risk (albeit much lower than with patents) of a third party filing a similar design and obtaining an earlier priority date. This might act as prior art against your design application.
And note - with designs there is also a relatively high risk of accidental or ill-timed disclosure of the design to a third party. This can be fatal to the validity of at least an Australian design application, although many countries overseas offer grace periods of up to 1 year for accidental or ill-timed disclosures. In some countries, it is also possible to ‘avail’ this grace period, even after publication of the Australian design application (in other words, in some countries valid design filings may be filed later).
Tip 11: File a deliberately 'flawed' design application
Australian designs register and publish quite quickly after filing, typically between three to four weeks. This means there is little time for withdrawal and refiling (see Tip 12). If overseas design protection is desirable, an early AU publication commits you to a tight timeline (6 months from the AU filing date) to lodge convention (priority) applications overseas. This would bring forward costs you may not wish to incur now.
An early publication can be delayed by including a ‘flaw’ within the application. The simplest and most ‘robust’ flaw is to omit a designers’ name, which will provoke a formalities rejection. This can delay the registration and publication period by around 4 months from filing, giving you time to decide whether to withdraw and refile (again, see Tip 12), or push forward.
Worth noting, that by delaying publication you can also delay ‘availing’ of the grace period for some overseas filings.
Tip 12: Withdrawing and refiling an application
Due to the speed that Australia designs register and publish, this tip especially applies if you have already filed a ‘flawed’ design application. During the resultant 4-month delay period, you can choose to 'abandon' the design application by either:
- allowing the application to lapse (i.e. through non-response to the formalities rejection; or
- submitting a request to the Australian Designs Office to 'withdraw' the application during this period.
Following this, an identical design application (e.g. another ‘flawed’ design application) can be immediately refiled to restart the 6 month overseas (convention) filing period, or refiled when cash flows improve. As with patents, this strategy ensures that the design remains confidential and minimal costs are incurred.
Disadvantages of this approach include:
- losing the original design application's 'priority date' (filing date);
- risks of the design validity being compromised from accidental or ill-timed disclosure; and
- the possibility a third-party files a similar design application with an earlier priority date (which would act as prior art)
To discuss any of the above in greater detail, or seek further advice about what your business can do to free up capital without exposing your IP portfolio to unnecessary risk, please contact the author or enquire via firstname.lastname@example.org