Archive for February, 2010

Design yin and Patent yang

Posted in 1P, Article, Design, IP Protection, Patent on February 20, 2010 by 1place

Do design and patent laws in Australia help secure innovations into the future?

The role of design

In the early 20th century, product “design” was often relegated to the practice of “styling” products (see Marty Neumeier’s The designful company published by New Riders). In the 21st century, however, creativity in its various forms has become the main driver of economic growth, heralded by ballooning consumer demand for well designed products.

Design today is a powerful tool for change, not just a tool for styling products and communications.

Design yin: protection of the form

In Australia, a design registration protects the overall appearance of a product resulting from one or more visual features of the product, which include:

  • shape;
  • configuration;
  • pattern; and
  • ornamentation.

This can be seen by looking at examples of design registrations on the Australian Designs Register. For example, various design registrations owned by Apple cover the visual features of its iPhone product. However, in practice, product design often goes beyond appearance to performance and functionality (as anyone who has an iPhone can attest).

For this reason, Australian design laws appear to be out of step with reality. Should design registration in Australia be more in line with what industrial design seeks to achieve?

Patent yang: protection of the function

A patent registration protects the functionality of a product or method. This protection is enabled by a set of claims giving rise to a legal monopoly in an analogous way that the boundaries of a property as articulated by a licensed surveyor give rise to a land title.

A patent protects the combination of functional features (integers) that make up the product or method, not the overall appearance. Thus, a patent for, say, a new magnetically-supported chair with a back and two arms would protect any new magnetically-supported four-legged chair with a back and two arms, no matter what the chair actually looks like.

As with registered designs, details of patents lodged in Australia are publicly available (with some limitations) by searching the Patents Register. For example, there is a large number of patents covering various functional features of the Apple iPhone – searching the Register for patents owned by Apple reveals the functional nature of patent protection.

When thinking about product design protection in Australia it is necessary to consider separately the product’s form and function. A design registration protects the form, while a patent protects the function.

Full protection using the yin form & yang function

The form (design registration) and function (patent protection) of a product both:

  1. have to be new (novel or not known before the lodgement takes place as used in Australia or documented elsewhere in the world);
  2. have to consist of one or more features of the product so that they interrelate in a specific way to make up the:
    1. overall impression (shape, configuration, pattern; and ornamentation for a design registration); or
    2. function in the form of device, method and/or system (through the combination of essential and inessential integers to claim a monopoly in a patent registration).

In addition, registration of a:

  1. design has to be distinctive (form); and
  2. patent has to be inventive (function).

A design is “distinctive” unless it is “substantially similar in overall impression” to an existing design from the standard of the “informed user”. The informed user is “a regular user…to whom the design is directed” and who would be aware of “‘what’s about in the market?’ and ‘what has been around in the recent past?’”: Review 2 v Redberry [2008] FCA 1588.

In terms of a patent, a product is inventive if the combination of functional features was not obvious to a person “skilled in the art” – that is, not obvious to people with the same knowledge and experience in the field of the invention.

A patent registration provides broader protection than a design registration since a patent is focused on the functionality and performance of a product as described in words, not limited to its appearance as represented by drawings.

Harmony without stillness

So let’s get into a little bit of controversy here: can a website layout have registered design protection?

Readers may be aware of the recent controversy when Google was granted US design patent D599,372 (which is the closest US equivalent of an Australian design registration) for its iconic website layout – that is, the simple website that we are all familiar with. There was a public outcry in some quarters – see for example “Who’s on crack in the patent office? Google Patents World’s Simplest Home Page…” and other interesting comments at

However, many critics confused the US design patent registration with a utility patent registration (the equivalent of an Australian standard patent registration). Therefore, Google’s design patent is limited to protection of the ornamental features of its unique website.

Although the design patent was granted in September 2009, Google first took steps to get this protection back in 2003. Therefore, Google had the foresight to challenge the conventional wisdom of what registered design protection could cover and also to recognise the power of its simple design well before it was put to use. This challenge has now paid off for Google.

In Australia, a website layout is potentially protected by copyright. Whether the same frontiers can be pushed in Australia, remains to be seen.

Getting back to yinyang

The comparison between design registration and patents illustrates the yin and yang of registered intellectual property (IP) protection for product designs.

Design registration (the yin) focuses on the overall appearance of a product design – this requires an appreciation of the whole picture. By contrast, patents (the yang) take a scientific reductionist view of each functional feature to obtain a linear, logical progression of features for grounding performance and functionality.

A patent can protect many “embodiments” of features (and arrangements within embodiments), giving broad protection for the functionality of a product design. By contrast, a design registration is limited to one combination of visual features giving rise to a product’s overall appearance.

Therefore, it would be advantageous for design registrations to cover different arrangements of visual features giving rise to a “substantially similar” overall appearance. This would give better protection against copycat product designs.

Possibly design registration can be enlarged as it has been in the USA to cover web page layouts and similar. In the interim, however, the Australian design registration system appears to be currently under utilised.


By Michael Bates and Josephine Inge of

Republished from the February Edition of Curve: Issue thirty
February 2010


Kung Hei Fat Choy!

Posted in 1P, Article, Branding, Trade Mark on February 12, 2010 by 1place

In recognition of the Chinese Lunar Year of the Tiger in 2010, we celebrate eight (lucky Chinese number) tiger brands / trade marks

1. Hot Stuff

Tiger Balm

Legend in a jar.  A secret formulation for a heat rub dating back to the times of the Chinese emporers.  Herbal based, contains no tiger.

2. Stop! Tiger time

Launched in 1932, Tiger Beer became Singapore’s first locally brewed beer.

The “It’s Time for a Tiger” slogan has run since its inception.

3.  Old School

Onitsuka Tiger

Onitsuka Co., Ltd dating back to the 1940s was the predecessor to ASICS.  Particularly renowned for the Mexico 66 design, featuring distinctive crossed stripes.  Still too cool for school.

4. Tiger in the bedroom on the golf course

Tiger Woods

Awesome professional golfer, prodigy, endorsement king, former Mr Perfect and human like the rest of us.

5.  T – I – Double Guh – Er!


Friend of Winnie the Pooh, room-mate of Kanga and Roo.

An iconic Disney character.  Complicated Winnie the Pooh IP rights.

6.  “They’re Grrrreat!”

Kellogg’s Tony the Tiger

Tony dates back to the early 1950s and is the mascot of Kellogg’s Frosted Flakes (Frosties) cereals. Deep voiced catchphrase They’re Grrreat!

7.  “Put a tiger in your tank”

Exxon Tiger

Emerged in the 1950s with slogan “Put a tiger in your tank”.  Originally the mascot of Esso.  When Esso changed its name to Exxon in the 1970s, the tiger was referenced in the slogan “We’re changing our name, but not our stripes.”

8.  Fur flys

Tiger Airways

Low-cost airline based in Singapore. Striking plane tail logo.

Kung Hei Fat Choy!

Posted in 1P, Photo on February 12, 2010 by 1place

2010…Welcome Year of the Tiger. 

1P wishes you a prosperous + happy New Year

Law firms in the new world

Posted in 1P, Article, IP Protection on February 8, 2010 by 1place

The Economist highlights the paradox of the jobless recovery where a “statistical recovery” is taking place in the face of “human recession”. Despite sustained and rapid growth in the US economy, jobs continue to disappear.

Jobless growth is a product of economies shifting away from reliance on manufacturing during the latter part of the 20th century towards information-based industries. People are no longer the linchpin; money and “man hours” are now disconnected – well, perhaps not in those laggard law firms that still charge on a time basis 😉

Law is a service industry. Although technology has transformed the way people communicate, we would argue that the adoption of technology to fundamentally transform the way we deliver legal professional services is still yet to come. Nevertheless, the information age has heralded the emergence of the “mega” law firm. Interestingly, Australia has some of the largest firms in the world (e.g. firms of around 1000 legal staff) despite being a small economy on a global scale.

Following on from the global financial crisis, reports abound globally about the shedding of lawyers from large firms, as work slows and clients think twice about the need to pay the fees demanded by the mega firms.  However, the pushback against fee structures for legal services pre-dates the global financial crisis, reflecting pressure for change in the way legal services are delivered and costed.

Like the rest of the labour market, lawyers are not immune from job losses and the need to re-train. The job for life is as much at risk in the legal profession as it is in other industries.

Law firms also need to retrain

What can be done? For workers wanting to protect their jobs, re-training and upskilling is one way to improve your chances. Paraphrasing from Richard Susskind, there is a need now for law firms to act as business partners and thus to have expertise beyond black letter law. We strongly agree with this. Very experienced lawyers and lawyers coming into the law as a second or subsequent career have a lot to offer. They bring the sum of their collective experience to bear on the services they deliver.

Law firms therefore could act as a launching pad for entrepreneurs (that have studied law or associated disciplines, or experienced lawyers with an entrepreneurial itch) to train in a law firm before their entrepreneurial launch – or to stay if they wish to pursue law and the firm can afford it.  The reciprocity in this relationship is that the law firm is seeding its future clients while gaining broader business/entrepreneurial skills within its own ranks.

Law firms can do it differently!

Stop, Kookaburra! Leave some for me

Posted in 1P, Australian IP Case Law, Photo on February 8, 2010 by 1place

Laugh, Kookaburra! Laugh

Posted in Australian IP Case Law, Copyright on February 8, 2010 by 1place

“Oh how life can be” is the final lyric of “Kookaburra sits in the old gum tree” for which it seems fitting that a song published in a Girl Guides’ magazine is causing problems for “Men at Work”.

“Spicks And Specks” – a public broadcasting rock comedy show – alerts a potential breach of copyright for which the owners were not aware of.

Sweet irony that the Girl Guides rise above Men at Work in the battle of the sexes.

Men at Work: “Can’t you hear, can’t you hear the thunder? You better run, you better take cover”

only to be replaced by:

“Laugh, Kookaburra! Laugh, Kookaburra! Gay your life must be”