IP Australia have just released the new Australian Design Search into the wild, replacing the (now) old Australian Designs Data Searching system, or ADDS.

It’s a vast improvement over the old system, although if you’re familiar with IP Australia’s efforts over the last few years you’ll see a lot in common with the Australian Trade Mark Search.  None of the glitchy bits or unsearchable fields of the old system have been carried over, which will be a relief for those of you who search designs regularly.

The link above will take you to the Quick Search.  It has a limited range of search options, most of which are non-technical; a name or a number.  You can also search images from here but I’ll go into that later.  If you’re not sure what to do, there is a range of colourful help tabs relating to each of the options below the searching field, otherwise try the Help link at the bottom of the search page.

Here’s the Quick Search page.

quick search page

The Advanced Search is exactly what it says.  You can now search multiple search options including images, numbers, keywords, statuses, dates and classification codes.  If you enter data into more than one field it treats the search as if you had an AND between the two fields.

Here’s the Advanced Search page.  You can open this page using the link towards the top right of the page.

design numbers

Many of the fields are similar to the old ADDS search, but are easier to use.  I’ll focus here on some that are different.

The major changes in what you can now search are the addition of status searching, and being able to search the text of the Statement of Newness and Distinctiveness, or the SOND.

Status searching is important to have when you want to limit your search to relevant designs.  I’m simplifying things, but for instance a freedom to operate search is generally limited to active statuses, i.e., pending or registered designs, or you may be interested in whether a registered design is under examination so that you can anticipate it being certified.  The point is, you now have options that you never had before.

Being able to search the SOND is also important.  I’m not saying they are always brilliant works of literature as they often just refer you to the images, but occasionally they contain relevant keywords not found in the product name, allowing you to locate that hidden gem that has been inaccessible in past searches.

Another major change is being able to look up classification codes, and enter them directly into the search page.

The symbol to the right of the classification codes text field, as shown below, opens up the Australian Designs Classification Codes popup.

classification codes

If you’re not familiar with the designs classification, you can search for a class in the text field at the top of the popup.  It looks for words appearing in the classification descriptions so be aware that you may need to try a range of keywords to find what you want.

design classification codes

Otherwise you can click on the text to open up the next level of classification, and in some cases a third level, and select the classes you want by clicking on the plus symbol.  You can select multiple classes as well.

The last new search option is image searching.  It’s an interesting exercise to search for an image, and I’m sure further refinement will happen, but for now you should treat an image search as supplementary to a search of classes or keywords.  It’s simple enough to conduct an image search.  Clicking on the Select Images link on the right hand side of the page allows you to choose an image file from your computer.

select images

Once that’s open you can crop it to any part of the image you wish to search for, before conducting the search.  I think best results are obtained from an image that is a drawing on a white background, but try it for yourself and give feedback to IP Australia about how it might be improved.

Once you’ve conducted your search there are a number of ways you can view the results.  The default grid view is customisable to show between two and five images across the screen.  Mousing over each design provides basic details, and clicking through reveals more detail including the entire gallery of representations for that design.  You can also choose a list view with one line per design.

From your search results, or from My List once you’ve selected a few designs that are relevant, you can export your results to Excel, or produce a pdf search report that outlines the searches you conducted, the relevant designs you selected, and the details of those selected designs.  The Excel spreadsheet is good if you like a lot of detail, including a thumbnail image, and want to customise a report, and the pdf provides a nice summary of your efforts for distribution purposes to management or investors for example.

IP Australia have done a nice job on the new Australian Design Search, and this has been done by consulting widely with users of ADDS and other interested parties to get the best possible outcome.  I say give it a go and conduct some design searching today.  You never know what you might find.

Authored by Frazer McLennan and Charles Tansey, PhD

Congratulations to Allira Hudson-GofersDuncan Longstaff and Michael Deacon, Shelston IP’s newly appointed Principals. Congratulations also goes to Nathan SinclairSerena White, and Danielle Spath for their promotions. This is well deserved recognition for their hard work and dedication shown towards their IP practice  and clients each day.

Allira Hudson-Gofers
Principal
BE(Mechatronic) (Hons 1), MBiomedEng, MIP, BA(Technology)Allira specialises in the provision of commercially relevant advice regarding patents and registered designs. Her expertise includes medical devices and diagnostic technologies; robotics; building and construction; sustainable technologies; and manufacturing processes.

Duncan Longstaff
Principal
LLM(IP) LLB(Hons1st) BSc(Biol)With over a decade of experience and higher degree training specialising in IP topics, Duncan’s IP litigation practice focuses on patent disputes involving pharmaceuticals, biotechnology, medical devices, mining and information technology.

Michael Deacon
Principal
BA LLB (Hons) GradCert TMLPMichael is a Lawyer and Registered Trade Mark Attorney with a focus on IP commercialisation. He has broad experience providing legal advice and drafting agreements across various commercial transaction types and assisting with brand protection, enforcement and strategy.

Nathan Sinclair
Senior Associate
BSc (Hons) (Chem) MIP (UTS)Nathan manages all aspects of Australian and overseas trade mark filings and prosecutions, filing strategies and trade mark portfolio management.

Serena White, DPhil
Senior Associate
MChem (Hons) (Oxon), DPhil (Oxon)Serena is a European qualified patent attorney, a UK and trans-Tasman patent attorney. She has
a strong technical background in organic chemistry.

Danielle Spath
Associate
GradCert TMLPDanielle maintains client trade mark portfolios and deals with the registration and protection of trade marks in Australia and overseas.

Shelston IP has been named a Finalist in the Financial Review Client Choice Awards 2019 for Best IP Specialist Firm.

Beaton Research + Consulting, the leading researcher in ‘voice of the client’ services and consultant to professional services, provides the independent research behind the Awards.

The survey research for the Client Choice Awards and beatonbenchmarks is done online from September to February. Individual respondents are invited to complete the survey in cyber-secure ways.

Firms’ clients to whom the firm has provided services and referrers of work complete the survey.

Respondents are asked to rate the firms’ brands and performance in delivering services on a range of criteria including quality, value for money, price, and innovation.

We handle the intellectual property (IP) portfolios for a diverse range of clients, many of whom are large multinationals. Their IP portfolios typically include all forms of registrable rights – patents, trademarks and designs. We also often find that certain clients have many IP service providers, each of which handle one or more of those registrable rights. Such a fractured vendor landscape can arise due to a variety of factors, such as historical reasons. For example, different IP Managers within the organisation have had different preferences for IP services providers and have spread the work around over time, or there may have even been an internal policy in this regard. Sometimes, a parent company may acquire smaller entities and will transfer any IP into the parent’s name, but will retain management of the IP with the existing service provider. This may be for perceived convenience, or simply due to a perceived cost for transfer of the portfolio. Whatever the reason, there are disadvantages to having the IP handled by plurality of service providers.

By reviewing the IP portfolios of the most successful organisations it is clear that industry best practice is to have the IP handled by a very limited number of service providers, and preferably consolidated to a single provider.

Industry best practice

There are many advantages of having your IP handled under one roof by a single dedicated IP team. For example, to enable the attorneys handling the IP to better understand:

  • the client’s commercial objectives,
  • the client’s existing technology, the technology currently under development, and what technology may be required in the future,
  • the client’s main competitors and their technologies, and
  • to gain a better understanding of the industry in general, including the common technical knowledge.

An understanding of the commercial objectives is important, as these objectives should frame the IP being developed now and into the future, and will assist the attorney to more comprehensively protect and enforce the IP. Consolidation of IP with a single service provider enables the attorneys to become more embedded in the organisation and fosters a more collaborative working relationship with the key people in the organisation (researchers, inventors, business development managers, etc). It can also be important to understand the client’s key competitor(s) and its technologies for freedom to operate issues and to assist the organisation in its decisions to attack its competitors’ IP.  All these factors lead to:

  • greater proactive and strategic management of the client’s IP (rather than a reactive approach to IP issues as they arise);
  • increased efficiencies in dealing with IP matters;
  • a service provider enabled to add real value to the organisation, and
  • cost benefits.

Furthermore, there are synergies which come about from this approach.  As attorneys/lawyers become more embedded in an organisation they are better able to brainstorm technical solutions with R&D personnel and to assist them to understand the commerciality of the solutions they develop to real-world problems. Additionally, the improved collaboration which is possible between attorneys and R&D staff can lead to more robust patent specifications being drafted, thereby improving the strength of the IP, reducing the ability of infringers to work around the IP, and increasing the prospects of surviving a validity attack. It also leads to the attorneys having a better understanding of the key prior art in the field, and the common ‘terms of art’.  The organisation can also benefit in other ways. For example, many in-house IP teams are relatively small and there can sometimes be a high turnover of attorneys. Utilising a single service provider supports portfolio knowledge and corporate memory.

Conclusions and summary

There are many advantages to an organisation having its IP handled by a single service provider, and is a ‘best practice’ approach to strategic IP portfolio management.

Shelston IP is well placed to assist with management and consolidation of your IP portfolio to achieve your commercial objectives.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

Authored by Paul Harrison

It’s that time of the year again: it’s National Ride2Work Day (Wednesday 17 October 2018). With this in mind, I thought I’d take the opportunity to show my appreciation for my favourite way to travel to work: the Brompton folding bicycle. I take a brief look at the bike and the role of intellectual property in its success.

What is a Brompton bike?

The Brompton folding bicycle was invented by Cambridge University graduate Andrew Ritchie in 1975 and named after the Brompton Oratory in South Kensington, London, which his flat overlooked. It folds conveniently into a compact package and, despite its small wheel size, displays surprising acceleration and nimble handling. Designed for commuters, this iconic bike is popular the world over.

Intellectual property protection

Patents

Patents provide protection for inventions which are new, inventive and useful. The original Brompton patent (EP 0 026 800 B1) was filed in 1979. This patent has long expired, so how is intellectual property contributing the continuing success of the Brompton?

Know how

These days, whilst the manufacturing of certain parts or processes is outsourced, the core production work is still carried out at Brompton’s UK factory. The manufacturing is complex and the company designs all of its own tooling. Keeping this know how within the company makes the bike difficult to copy and helps to keep the company a step ahead of potential competitors.

Designs

Brompton Bicycle Limited has a collection of registered designs for various bike parts, such as brakes and grips, registered in the UK and Europe. These registered designs protect how the parts look.

Trade marks

The company also owns several internationally registered trade marks, including the word mark “Brompton” and an instantly recognizable picture mark consisting of 3 bikes, stylized, in unfolded, partially folded and fully folded configurations.

Each trade mark acts as a “badge of origin”, identifying the source of Brompton bikes, parts and accessories and related services.

Marketing

Interestingly, Brompton Bicycle Limited does not advertise. Its marketing philosophy is to produce a great product that its customers love and to let its happy customers spread the word. And it works … arguably this article is one example!

Authored by Serena White, DPhil and Charles Tansey, PhD

On August 10, Patricia Kelly retired from her position as Director General of IP Australia, after almost five years in the role. Patricia will be replaced by Michael Schwager whose current role is as acting Chief Operating Officer at the Australian government scientific research agency, the Commonwealth Scientific and Industrial Research Organisation (CSIRO).

Shelston IP would like to acknowledge the significant contribution and leadership that Patricia has made to modernizing IP Australia by introducing many beneficial initiatives, including the introduction of digital technologies – making IP Australia the country’s first fully digital government agency; and the creation of a national IP register called the IP Government Open Data (IPGOD), allowing public access to more than 100 years of IP records. Patricia also was acutely aware of the importance of education and awareness of the IP system. This commitment resulted in the creation of a number web-accessible “IP toolkits” which brought the needs of Australian innovators into sharp focus.

As Patricia’s successor, Michael Swager brings a background of industry, science, and innovation to the Director General role. Shelston IP wishes Michael all the best for continuing and extending Patricia’s legacy by implementing further beneficial changes to IP Australia.

Authored by Paul Harrison

In a recent article, we outlined the role of IP in the innovation process. In particular, we noted that the innovation process can be conveniently described as having 4 main stages, namely:

– conception of innovative ideas,

– the research and development (R&D) stage,

– commercialisation of products or services, and

– the marketing of those products or services.

The process may also include iterative aspects and is often cyclical in order to continually produce new product and service offerings to the market (the so-called “cycle of innovation”).

We noted that the involvement of an IP professional is critical at each stage of the innovation process, for example to provide advice on: legal (confidentiality) agreements, prior art searching and analysis (patentability, freedom to operate, competitor and landscape mapping), trade mark and design registrations, patent strategy (including advice on when a trade secret vs patent protection is appropriate), and enforcement matters.

  • We also noted that additional specialised advice is sometimes required in relation to, for example, Innovation Incentives, comprising advice on Government grants and rebates, and collaborative funding opportunities.

As the activities undertaken at each stage of innovation are different, it follows that the IP considerations are different at each stage, too. It is useful to summarise the stages of innovation and the main forms of IP that are relevant at each stage, and to identify what forms of specialised advice may additionally be appropriate at each stage. In this regard, we refer to the following table.

Closing comments

Outlined in this article is a summary of the main stages of the innovation process and what main IP tools are relevant throughout. We also outline what relevant advisory services are relevant corresponding to the stages of innovation. When an idea is an important commercial asset, it is wise to engage a qualified IP professional (patent or trade mark attorney) to assist in the generation of relevant intellectual property rights that suitably protect that commercial asset. At Shelston IP, we have a number of highly experienced attorneys who can assist in navigating these complexities. Contact us to understand what IP tools are most appropriate for your innovation.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

Authored by Paul Harrison

The Australian registered designs system provides a fast and efficient mechanism for innovative companies to secure a monopoly for the visual appearance of commercially valuable products. Arguably, the Australian registered designs system is somewhat underutilised by those companies who would most benefit from its features.

To assist innovative companies in gaining a better understanding of the value of the Australian registered designs system, this Handbook provides: a quick reference practical guide to the features of the system, and a summary of Australian Designs Office decisions issued in 2017.

Please click here to access the Handbook and do not hesitate to contact any member of the Shelston IP Design Team if you are interested in learning more.

Authored by Greg Whitehead

Executive summary

– Evidence establishing the state of the prior art is important, as this evidence may influence the other statutory factors in assessing distinctiveness.

– Prior art evidence should be limited to before the priority date of a design to be fully persuasive.

– Side by side comparisons between a design and the prior art may assist in demonstrating a visual effect in favour of distinctiveness.

– An appropriate Statement of Newness and Distinctiveness indicating any specific new and distinctive features may increase the prospects of success.

Background

This is a decision of IP Australia as the Australian Designs Office on the validity of a registered design for a coffee maker by Pi-Design AG (Pi).  In Australia, designs are examined only for formalities before registration.  However, it is necessary to request substantive examination to enforce the registered design – this process is called “certification”.

In this case, Pi obtained registration for its design for a coffee maker – Design No. 201515424, Registration No. 365096 (the Design) – and requested examination of the Design.  An examination report issued, citing Pi’s earlier design for a coffee maker, Design No. 201514163, Registration No. 363750 (the Earlier Design), as rendering the Design invalid. After a response to the examination report was unsuccessful, Pi requested to be heard on the issue.

Submissions

Pi conceded that there were many similarities between the Design and the Earlier Design.  However, Pi submitted that there was a significant difference in that the Design incorporated double walls for the sides and bottom of the coffee maker, whereas the Earlier Design only had single walls.

The decision

The primary issue was whether the Design was distinctive over the Earlier Design, as it was quickly held that the Design and the Earlier Design were not identical due to the double walled appearance of the Design.  Hence, the Design was new.

The hearing officer agreed with Pi’s submission that the informed user was someone familiar with coffee makers but noted that the Design and Earlier Design relates to a specific type of coffee maker – a non-electric “pour-over” coffee maker (in contrast to an expresso machine, for example).  Accordingly, in the hearing officer’s view the informed user would “pick out” smaller differences between two coffee makers of this type than between a pour-over coffee maker and an expresso machine.

The hearing officer then considered the statutory factors in assessing substantial similarity between the Design and the Earlier Design from the point of view of the informed user, being:

  • giving more weight to similarities than differences;
  • having regard to the state of development of the prior art base;
  • the features identified in any Statement of Newness and Distinctiveness (SND);
  • the amount, quality and importance of any similarities; and
  • having regard to the freedom of the design creator to innovate.

State of development of prior art base

Pi had submitted evidence of the state of the prior art for coffee makers. However, the hearing officer noted that this evidence was defective as it included results that were published after the earliest priority date of the Design.  Despite this defect, this evidence was of some assistance in assessing the freedom to innovate.  The hearing officer referred to the search conducted during examination and noted that the prior art base was crowded with many types of coffee maker designs, indicating that smaller differences may be more significant.

Freedom to innovate

In considering this factor, the hearing officer noted that many coffee makers of the pour-over type shared common features that were dictated by their function, such as the conical filter holding portion, its location above the decanter and the use of a handle or thermal collar to safely transfer the hot liquid.  Also, the hearing officer noted from Pi’s evidence that this type of coffee maker had a small footprint and there seemed a preference for a relatively simple design, indicating there was market demand for these features.

Amount, quality and importance of similarities

The hearing officer held that there was a large amount of similarity, as conceded by Pi, but did note that the greater portion of the Design incorporated the double walled appearance.  The quality and importance of the similarities were informed by the freedom for the designer to innovate.  Hence, those features in the Design and the Earlier Design that were dictated by function, such as the conical filter holding portion, as well as the features dictated by market demand, such as the slimness and simplicity of the design, were to be discounted.  Accordingly, the large amount of similarities between the Design and the Earlier Design were offset by the quality and importance of those similarities being relatively low.

Statement of Newness and Distinctiveness

The hearing officer found the SND of the Design was not helpful as it only generically referred to the shape and configuration of the coffee maker.  There was not any reference to a specific feature that was identified as being new and distinctive.

Assessment and decision

The large amount of similarities between the Design and the Earlier Design were to be given more weight, and so suggested a lack of distinctiveness.  However, this was offset by the state of the prior art suggesting small differences are significant, the quality and importance of the similarities being relatively low and the freedom to innovate. These factors were in favour of a finding of distinctiveness.

The hearing officer found that the factors were finely balanced but ultimately was persuaded to find that the Design was distinctive over the Earlier Design.  This was assisted by the informed user being found to readily note smaller differences and by Pi supplying a side by side comparison of the Design and the Earlier Design when in use, as shown in the accompanying picture where the single walled design is on the left and the double walled design is on the right.

This side by side comparison accentuated the double walled appearance of the Design and its associated visual effect due to the contrast provided by the coffee to the double walls.

Comment

This decision illustrates the importance of evidence to establish the state of the prior art, which in turn may influence the other statutory factors in assessing distinctiveness.  In the present case, Pi was able to show through its prior art evidence that the large amount of similarities between the Design and the Earlier Design were offset by the other factors of the quality and importance of similarities and the freedom to innovate.

However, Pi’s prior art evidence was not fully accepted as it included designs published after the earliest priority date of the Design and reliance had to be placed on the prior art search conducted by the Examiner.

Also, providing a comparison between the designs enabled Pi to emphasise the visual effect created by the double walls that persuaded the hearing officer to find that the Design was distinctive.

The case further demonstrates the importance of using an appropriate SND to indicate new and distinctive features.  If the SND of the Design had focussed on its double walled appearance, then it is likely that the hearing officer (and possibly the examiner) would have more readily found in favour of distinctiveness of the Design.

Authored by Andrew Lowe

Securing protection for your intellectual property in the South Pacific can often be both challenging and time-consuming.  If registration is available (which is not always the case), the registration process varies from country to country and often involves a labyrinth of filing requirements, elderly legislation and “island time”, where an outwardly straightforward process may take several months (even years) to complete.

However, the Intellectual Property Office of Papua New Guinea (“IPOPNG”) has recently unveiled a series of improvements to their www.ipopng.gov.pg website, a move which will assist brand owners interested in protecting their rights in Papua New Guinea (“PNG”).

The IPOPNG website now provides access to a searchable electronic database of PNG trade marks which is hosted by the World Intellectual Property Organisation (WIPO).  Trade mark owners can now conduct direct availability searches prior to filing to help identify potentially conflicting registrations.  It is unclear how often the IPOPNG database will be updated, but there is currently a delay of ~3 months for new trade marks being published online, which suggests that some care should be taken when reviewing search results.

Those who currently own trade marks in PNG can also check on the status and scope of existing registrations.  The updated website also allows users to download forms and schedules of official fees.

While the changes will not impact upon some of the frustrations experienced by trade mark owners managing portfolio protection in PNG, such as typically long delays in the issuing of certificates of registration, they are certainly a step in the right direction.

PNG’s population exceeds 8 million (almost twice that of New Zealand), and it is potentially a significant market for brand owners.  Consequently, it would be prudent for brand owners trading goods or services there to consider seeking protection.

Shelston IP deals directly with IPOPNG and certain other South Pacific intellectual property offices when registering trade marks.  Further, with a network of trusted and experienced associates in the South Pacific, Shelston IP is able to assist you in protecting your trade marks throughout the South Pacific region.

If you require further information, please let us know.

Authored by Nathan Sinclair and Sean McManis