Protecting the smallest innovation: How to get a competitive advantage in established product types

Paul Thompson - Trade marks online

By Paul Thompson

For many of our clients in established industry sectors, the smallest changes to product design can have a big impact on their business. We are often asked whether we can protect these small but important innovations.

A recent decision by the Australian Designs Office in which Fisher Adams Kelly was involved, highlights that changes to an existing product design, which on their face appear minor, may still prove worthy of registered design protection. This is particularly so if the changes provide a functional advantage and the product to which the design is applied is in a “mature field”; an established field in which there is little room for innovation.

The decision, RemoveRite Inc. [2013] ADO 7, related to screws with hexagonal heads (“Hex Headed Screws”) which are both well established and do not have a wide range of options for variations in appearance. By choosing to register the design of these improved screws, our client has been able to protect this small but important competitive advantage, where other forms of protection would have been much more difficult, if not impossible, to attain.

Background 

The Applicant (our client) filed applications for registrations of designs for two Hex Headed Screws. Applications for an Australian design are initially registered without examination but can not be enforced until they have been certified by undergoing successful examination.

New registered design

One of the client’s new designs for hex-headed screws.

The Applicant requested examination and had a US design patent cited against its two Australian design applications.

The client's existing patented screw which was raised as an objection to their new registration.

Existing patented screw which was raised as an objection to their new registration.

Andrew Cale, a Principal of Fisher Adams Kelly, requested a hearing on this matter after the Examiner upheld the objections to certification. Requesting a hearing is a form of appeal from an Examiner’s decision. After written and oral submissions from Mr Cale, the hearing officer overruled the Examiner’s decision and ordered the designs to be certified.

Brief Reasons 

All new applications for registered designs now occur under the Designs Act 2003 (the New Act). This legislation was introduced 97 years after enactment of the old Designs Act 1905, due to perceived deficiencies in that earlier legislation. As a result of the introduction of some new concepts and terms, the scope and operation of some aspects of the New Act are being only slowly clarified in decisions by hearing officers and courts.

A design is considered registrable if it is “new and distinctive” compared to what existed before (“the prior art”). It was agreed by all parties that the two screw designs were “new”. The more problematic issue was whether they were distinctive. The New Act provides some guidelines in relation to considering “substantial similarity and overall impression” a hallmark of distinctiveness. An important part of this step is that the decision must apply the standards of “the informed user”.

In the present cases, the distinctive features of the registered designs related to enlarged flanges below the hexagonal heads and a taper from the flange to the shank. The flanges were thicker than flanges of the prior art, and had bevelled upper and lower edges. It was accepted that the tapered shank is an important aspect because it allows seating and engagement of the screw with the material into which it is being fastened and reduces the likelihood of breakage or of that material splitting.

Our client, working with Fisher Adams Kelly, submitted in this case that:

1. All screws are similar in shape, in that shape is limited and functionality is paramount;

2. The designs carry functional visual features to which an informed user would pay regard;

3. The informed user would conclude that the compared designs are not substantially similar in overall appearance.

The Hearing Officer accepted that an informed user would be a person such as a builder, and:

1. He/she would be drawn to the functionality of the screw in determining it for a particular task;

2. The prior art of the screw is a mature technical field;

3. The fact there is a developed prior art base will mean that smaller differences are sufficient to result in a finding of distinctiveness;

4. The features that would be considered by an informed user will have increased weight;

5. Given limited freedom of design, more weight should be given to smaller differences, and on that basis, the designs should be certified.

Summary 

This case highlights the need for careful consideration on changes in designs. Even minor changes may be significant in qualifying for valid design protection. This is especially the case if they provide a functional advantage. Additional significance will arise if the product to which the design is applied is in a mature field of technology.

If changes represent a commercially significant advance, even if those changes are intrinsically small, it may well be worth seeking protection through an Australian registered design.