Evaluating Infringements

A registered design is infringed by unauthorised reproduction of the design or by an obvious imitation of it. A broader test of fraudulent imitation is applied where the reproduction amounts to copying but may not qualify as obvious imitation. Under Australian design registration laws, the whole article is considered, unless the design registration draws attention to a particular aspect. In recent years, the courts have taken a narrow view of the protection afforded by design registrations. As a result, the scope of protection is generally limited so that only articles of very similar appearance will infringe a design registration.

Griffith Hack provides advice regarding infringement and/or the validity of a design registration that may be infringed. We also advise on how to stop an alleged infringer and on enforcement of design rights.

Copyright may also be relevant to a design. A design drawing qualifies as an "artistic work" within the meaning of copyright law irrespective of any artistic quality. However, copyright protection does not apply to an industrially applied three dimensional work where design protection is available. Unauthorised copying of a design drawing would still infringe the copyright. Griffith Hack advises on the relevance of copyright infringement to a design.

Due Diligence and IP Audits

An IP audit or due diligence exercise is a comprehensive analysis of a company's IP assets and the systems used by the company to record and protect those assets. This analysis enables implementation of long term IP management which ensures that IP assets are:

• Properly identified in the future.
• Protected to ensure future value as an asset and safeguarded as a valuable revenue stream to provide a competitive edge.
• Brought to account on a company's balance sheet, boosting the net worth of a company's business.
• Increasing a company's profitability through licensing, selling or raising finance against them.

IP assets may reside in many areas of a business. It is Griffith Hack's experience that much of an organisation's IP remains undiscovered. In conducting an IP audit, Griffith Hack reviews the business of the organisation to determine where IP is being created. Griffith Hack interviews all relevant personnel and reviews key documentation before compiling a comprehensive report on the current state of the organisation's IP assets and a list of recommended action. This report is always framed within the context of the industry and the commercial environment in which the organisation operates.

IP Audits go hand in hand with the conduct of due diligence exercises. This usually occurs where a company is selling its business, including its IP assets or where a company wishes to raise capital against the security of its assets including IP assets or where a company is about to embark on an IPO. Furthermore, a due diligence exercise is useful to assess the value of an IP asset portfolio which is to be licensed or acquired. Griffith Hack can:

• Advise as to whether a patent covers the commercial embodiments which it is intended to protect, confirm that the patents are in force.
• Advise as to the scope protection forwarded by a patent portfolio.

Conducting a due diligence exercise will establish whether a company is really getting what it is paying for or conversely it will provide comfort to investors who intend to invest in the company's business.

Enforcing & Defending

Obtaining registration of a design does not amount to enforcement of rights. Enforcement involves detection of infringement, evaluation, demanding an infringer stop the action that amounts to infringement and court action, if necessary. Griffith Hack undertakes these steps by making trap purchases, providing an infringement opinion, sending a letter of demand, preparing a case against an infringer and representing the owner of a registered design before the court.

Griffith Hack also assists with defense against allegations of design infringement. This will often involve providing infringement advice, responding to an allegation of infringement, preparing a defense against an infringement action and, if necessary, representing the alleged infringer before the court.

Many infringement disputes are settled. Griffith Hack is able to advise and negotiate a suitable settlement of a design infringement dispute.

Design Licensing / Transfer

Designers today are responsible for the appearance and function of many goods, such as building components, clothing, appliances, furniture and many other consumer products. Effective design plays a key role in product marketing. A sleek, unique or characteristic design when applied to an article is usually essential for establishing market loyalty and product recognition, and can provide a competitive advantage to a manufacturer. Registered design licences can provide a company with a valuable income stream. Companies therefore turn to Griffith Hack for the negotiation and drafting of clear, effective and workable licence agreements and for advice on design licensing issues and disputes.

Griffith Hack's transactional lawyers advise on all aspects of the licensing and transfer of registered designs, including the effect on agreements of any alterations to a design, and the effect of licences and joint ventures on future intellectual property ownership.

Design Renewals

The initial term of a registered design is one year from the date of registration. Registration may then be extended to six years from the application date by filing an extension application. Griffith Hack will automatically apply for an extension on behalf of clients unless instructed otherwise.

The registration may subsequently be renewed every five years, for a total period of sixteen years from the date of filing the original design application. We refer details of our clients' registrations to Computer Patent Annuities Limited Partnership (CPA), unless instructed otherwise. CPA then issues clients with reminders and handles the renewals.

Filing within Australia

The registration process for a design begins with filing a design application with the Australian Designs Office. The application must include at least one representation of the design and may take the form of drawings or photographs that clearly depict the article to which the design is applied. Sufficient representations are required to show the whole article. Preferably, these representations should show a perspective or isometric view of the article and a view from every elevation. The Designs Office requires seven copies of the representations. Griffith Hack can prepare all the necessary documents and representations for filing with the Designs Office.

The initial term of a registered design is one year from the date of registration. Registration may then be extended to six years from the application date by filing an extension application. Griffith Hack will automatically apply for this extension on behalf of clients unless instructed otherwise.

The registration may subsequently be renewed every five years, for a total period of 16 years from the date of filing the original design application. We refer details of our clients' registrations to Computer Patent Annuities Limited Partnership (CPA), unless instructed otherwise. CPA then issues clients with reminders and handles the renewals.

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