The position regarding the valid registration of designs for graphical user interfaces (GUIs) in Australia is currently unclear. We discuss below the registration of GUI designs in Australia, and steps that may be taken to maximise opportunities for successfully obtaining valid Australian design rights.
The approach to registering a design in Australia is different from most other countries in that substantive examination of the design is optional. This means that a design can be registered without ever being examined. Examination (known as Certification) is only required should the design owner need to actively enforce the registered design.
Our experience is that IP Australia will allow applicants to register GUI designs. An outstanding question, however, is whether or not a registered design for a GUI would be found to be valid if it is subjected to examination.
There exist a few potential hurdles in establishing valid, enforceable design rights for GUIs in Australia. Under Australian design law, a registered design must be for a product. During substantive examination of a registered design, IP Australia assesses the visual features of the design by considering the product in an “at rest” state. This can create a problem, as a GUI is normally hidden when the associated product is in its “at rest” state, and therefore the design will not be visible.
The reasonableness of IP Australia assessing the visual features of a product “at rest” was called into question in a 2016 report to the Australian Government issued by the Advisory Council on Intellectual Property (ACIP), in which ACIP states: “There is nothing in the legislation which requires that visual features be observable in the ‘resting’ state or when unconnected to electricity. IP Australia should reconsider, and abandon, this aspect of its practice in assessing the validity of designs.”
In response to the ACIP Report, the Australian Government has indicated support for ACIP’s recommendation that “the treatment of virtual or non-physical designs be reconsidered, for example by allowing consideration of the product in its active state, not just its resting state, when considering validity”. Accordingly, we expect that the validity of Australian design registrations related to GUIs is likely to be clarified in the relatively near future, with the outcome being that designs related to GUIs are to be capable of being found valid, subject to the usual requirements for registration (eg of newness and distinctiveness).
Moreover, a recent IP Australia hearing decision has found a design registration in which:
to be invalid in part due to IP Australia considering the image not to be a feature of the display screen, as such, since other components of the device (of which the display screen is one part) are required for the image to be displayed on the display screen. In our opinion, IP Australia may have come to a different conclusion if the design registration had specified the product as an “Electronic device including a display screen” or similar.
We currently recommend the following when filing Australian design applications for GUIs:
Given the present uncertainty with regard to GUI design registrations passing examination, however, we recommend against filing a request for examination (at least until the situation becomes clearer or there are strong commercial reasons for requesting examination).
In some jurisdictions, a sequence of images are filed to depict animated GUIs. In our experience, IP Australia tends to consider design applications depicting animated GUIs (or any GUI that has a different appearance at different times, eg when in different operating modes) to be related to multiple different designs. As a result, IP Australia will request that the applicant selects one of the embodiments for registration and, optionally, files divisional applications or pays separate filing fees for each of the other embodiments. Whether divisional applications are filed, or separate filing fees paid, in effect a plurality of design applications will result, for which separate examination (if requested) and renewal fees will be payable.
It is possible to file and register a GUI design in Australia.
However, care should be taken at the time of filing to maximise opportunities for successfully establishing valid rights, such as during examination. That said, in view of IP Australia’s current position, it is recommended that examination is not requested until there is a change in case law or legislation relating to GUI designs.