6 Searching for Designs

 

A design is registrable if it is new and distinctive compared to the prior art base.^[1] As discussed in the previous chapter, section 15 casts the net widely to establish the prior art base. Designs published in the Australian Designs Register (the Register) are one potential source of prior art information. In addition, the Register can provide valuable information about the rights filed by others. Anyone can access and view designs on the Register with the help of IP Australia’s Australian Design Search system.

When examining a design, an examiner will routinely turn to the Register to understand the prior art for a design and locate identical and similar designs. Searching the Register is a valuable skill for anyone seeking protection for a design. This chapter aims to develop skills in searching the Register using the Australian Design Search system. This chapter first introduces the Register, its information, and how to access the Australian Design Search system. The chapter then discusses building a search strategy to find identical or similar published designs and perform effective searches on the system.

The Australian Designs Register

Remember, when a design application passes the formalities assessment, the Registrar must not only notify the registered owner and the public of the outcome,^[2] the design must also be entered into the Register.^[3] The Act requires the Registrar to make applications for registered designs and any associate documents open for public inspection.^[4] Read section 60 below.

 Read

The Act establishes a Register of Designs that must be kept and maintained by the Designs Office. The Register must be available to the public so that anyone interested can inspect the particulars kept by the Designs Office.^[5] Section 111 of the Act stipulates the particulars to be entered into the Register. Read section 111 below.

 Read

Although section 60 requires more documents to be made available to the public (for example, examination reports and responses),^[6] these are not required to be entered in the Register.^[7] If desired, the documents could be requested under the Freedom of Information Act 1982 (Cth).

In keeping with modern times when accessing information, the Act permits the keeping of the Register wholly or partly by use of a computer.^[8] In practice, IP Australia maintains and keeps the Register of Designs with the online Australian Design Search system.^[9] Keeping an online Register enables public access to the Register at any time.^[10] Most modern design registers are online databases containing records of each application submitted to an intellectual property office.^[11] The public can inspect the national and international design registers using a search form similar to that seen with online search engines.

The Register contains all the details disclosed in a design application as well as the design representations. The design application will first be published on the Register (with only bibliographic details published).^[12] Representations and classification codes are added once the application passes the formalities assessment.^[13] The granular application data assists any party in searching and locating designs. Searching the Register can help an examiner determine whether a design is new and distinctive. The information can help prospective applicants and their representatives determine the likelihood of registering the design. In addition, a register of designs can assist in understanding pre-existing rights in designs.

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Explore the interactive below to explore what information is contained in the Register.

The Australian Designs Search System

The Register is accessible using the Australian Design Search system. In simplest terms, the search system is an interface that helps search the database of design applications and registrations. The online search system contains over 50 years of applications and registrations.^[14] For practitioners, searching the Register is essential to understanding what is registered, advising applicants and predicting how an examiner will navigate the prior art base.

Not all data published in the Australian Official Journal of Designs can be searched on the Australian Design Search system. Currently, there are over 240,000 designs listed on the database. The earliest application was filed on 15 August 1972. IP Australia has disclosed that the data coverage is of all applications and registrations from 1986 and all registrations captured from 1973 to 1985 that were still active in 1985.^[15] Despite the prior art base not being restricted by the age of documents or use, designs filed prior to June 1972 are captured in the database.

The current Australian Design Search system was introduced in 2019, replacing the older Australian Design Data Search (ADDS) system. Launched in 1996, the ADDS user interface was a basic internet search form. Users would select fields from a drop-down box and enter the desired values in the corresponding entry field (shown below). Multiple fields could be strung together using Boolean operators and groups. Searching using ADDS was not for the faint-hearted. Practitioners were the most common users of the system, using the advanced search to string together different fields and values to locate targeted results.

 

A simple search allowed users to search across commonly searched fields.

Assisted common searches were available that helped structure the search.

On July 10, 2019, IP Australia announced the redesigned search system that followed a redesign of the Australian Trade Mark Search system introduced in 2017. At the time, Michael Schwager, Director General of IP Australia, stated, ‘The new single search bar will help IP attorneys, designers and small to medium businesses search for Australian designs much more effectively and efficiently’.^[16]

Navigating the search system

When accessing the system, there is a choice in the search interface — a ‘Quick’ or ‘Advanced’ search. As the name implies, a ‘Quick’ search is a low-involvement search. Like the old simple search, the interface comprises a single search box (like Google) and performs a text or image search.

A Quick search involves a choice of input type. Typing a keyword into the textbox finds designs based on product names, owner information or design numbers. These fields are described in more detail below. Results from a single search on the Quick Search page must never be used in isolation. However, variations in product or owner name should always be used when using the text field.

An ‘Advanced’ search enables users to perform more structured searches, utilising multiple fields of their choice. An advanced search can utilise all information contained in design applications and registrations.

 Do

Explore the features of the Advanced Search page in the interactive activity below.

The Quick and Advanced Search pages allow uploading an image or multiple images. A search based on visual similarity is performed with the uploaded image. This function followed the inclusion of image searching in the redesigned Australian Trade Mark Search system.^[17] Executing an image search employs an algorithm that returns visually similar designs based on representations contained in the system. Click on the camera icon and follow the prompts to upload an image. If additional images are required, use the ‘add’ button to upload more. The uploaded images will appear below the search bar once completed. A search will only be performed once the search button is clicked.

Caution should always be used when performing image-based searches. Uploaded images that contain details that do not form part of a design can impact the accuracy of the returned results.^[18] For example, an image of a chair including elements of ornamentation or pattern may affect the results of finding similar-shaped chairs.

Comprehensive searching should involve a combination of images with other search criteria. Additional search criteria can be used alongside an uploaded image on the Quick Search page. Once an image is uploaded, type the desired search terms in the textbox. An effective strategy is using an image alongside classification codes.^[19] However, this can only be achieved on the Advanced Search page. Change the search page using the ‘Advanced search’ button and upload the images with the camera icon. Once uploaded, additional fields can be used, including classification codes (described below).

User preferences

Users can choose which search interface they return to after an initial visit. The default interface will also be the quick search. Advanced search may be the interface of choice for practitioners and those familiar with the system. The system allows users to set their default landing page when visiting the search system. To set the user preferences, follow these steps:

Click on the menu button at the top right hand corner of the page and select ‘⚙️ User Preferences’

Change ‘Home page’ from ‘Quick search’ to ‘Advanced Search’ with the drop-down box.

The user preference menu also allows users to control how results are viewed (grid or list views described below), how many results are displayed and which fields to display.

Advanced Searching

An advanced search efficiently searches the Register. Practitioners and examiners use this search interface. Additional search fields are accessible on this page to narrow search results. The efficiency of a search will depend on the combination and use of these fields. This chapter will focus on developing and performing searches using the advanced search interface. To better understand how to use the search system, a starting point is what fields are searchable.

 Do

Explore the interactive below that explains the fields and buttons available for searching.

Searching across multiple Design Acts

Australian design applications filed with IP Australia are administered under the Designs Act 2003 (Cth). However, the Register does contain information for designs applied for under the 1906 Act (that is, those filed before 17 June 2004). Each record on the system includes an indicator of which Act the application was filed under. The text on the bottom right of the page is in the format ‘This has been filed under the Designs Act [2003/1906]’.

Terminology, therefore, may differ between a record in ADS for an application filed under the 1906 Act and the current 2003 Act (despite the 1906 applications receiving protection under the transitional provisions of the 2003 Act). The following table explains the legislative terms that have changed since the introduction of the 2003 Act:

2003 Act Terminology	1906 Act Terminology	Explanatory notes
Product	Article	For the purposes of the 2003 Act, a design must be in relation to a product.  Under the 1906 Act, the expression used was “article” rather than “product”.
Designer	Author	Under the current Designs Act, the creator of a design in the Designer.  The creator of a design was formerly known as the Author of that design.
Ceased	Ceased/Expired	When the registration of design terminates it is Ceased, whether this by positive administrative action or at the end of the term of registration  Under the old Act, a design registration Expired at the end of its full possible term of 16 years.
Excluded	Divisional	Under the old Act, a further application for a design that had been excluded from an application was referred to as a Divisional application.  The new Act term Excluded has replaced the old Act term Divisional.  Note that excluded designs may otherwise be referred to as “divisionals“ or “divisional designs”, although this language is not used in design records.
Statement of newness and distinctiveness	Statement of Monopoly/ Statement of Novelty	The Statement of Newness and Distinctiveness identifies particular visual features of the design as new and distinctive.  Under the old Act, the Statement of Monopoly details the area of monopoly claimed for the design and the Statement of Novelty details the novelty of the Design.

IP Australia’s Guide to 1903 Act vs. 2003 Act terminology (CC-BY 4.0)

The Search Fields

The fields of the Advanced Search page are varied and can be searched in different ways. The following discussion explains each field, including the format of the information and how to search it.

Application and Registration numbers

Individual design records can be searched using two different kinds of numbers — design or registration numbers. Entering a numerical value in this field will search across both numbers.

Design numbers are those allocated to each design filed with IP Australia and formatted as YYYYNNNNN (also known as an application number). The first four numerals indicate which year the application was filed. Prior to March 24, 2016, applications were provided not only with an application number but also a registration number upon registration. IP Australia indicates that registration numbers range from 61353 to 158576 under the previous 1906 Act and 300000 to 367887 under the 2002 Act. If an application was registered after March 24, 2016, one identifying number (design number) was allocated.

If a design’s application or registration number is already known, it can be entered directly into the field or the search field on the Quick Search page. Alternatively, multiple application or registration numbers can be searched using commas, spaces or decimals between the inputted numbers. A range of numbers can be searched using hyphens between two values (e.g. 202200001-202300001).

The techniques for searching design numbers are detailed in the table below.

Search Terms	Results
202310001	Will find the design that has been allocated that number
202310000, 202310001, 202310002	Will find those three designs which have been allocated those numbers
202310000 202310001 202310002	Will find those three designs which have been allocated those numbers
202310000.202310001.202310002	Will find those three designs which have been allocated those numbers
202310000-202320001	Will find design numbers in this number range (inclusive).
202310000-	Will find all designs with a number equal to or larger than 202310000
-202310000	Will find all designs with a number equal to or less than 201713644

IP Australia’s Guide to Searching the Number Field (CC-BY 4.0)

Names

Searches can be performed based on people or entities related to a design. Registered owners, designers and those with a claimed interest in the design (i.e., licensee or mortgagee) are searchable. Searching a name in the Quick Search page will only return matched results based on owner information. Be careful searching for words in Quick Search — the field will return any matches in product name and owner information (for example, a text search for SPOON would return designs where the owner’s name is The Spoonie Society Pty Ltd as well as designs where the product is described as a spoon)

When performing a name search on the Advanced Search page, the system will assist the search with a dropdown menu. A list of different search options will be presented once a name is typed in this search field. The dropdown box helps choose between all party names containing the desired word or term. When searching for design owners, this feature is useful. The field can present different name variations that may have changed over time (e.g., Apple Inc. and Apple Computers Inc.). After typing the word, use the mouse to navigate the options before selecting the desired searches with the checkbox buttons.

The techniques for searching names are detailed in the table below.

Search	Will find	Will not find
JOHN	Any designs with JOHN/JOHNS/JOHN’S in the owner’s name, such as John’s Designs Pty Ltd and John Smith.	Jon or Johnathan
RICHARD JOHN PHILIP SMITH	Any with RICHARD and JOHN and PHILIPand SMITH in the owner’s name (or plurals/possessives of these names) in any order.	Richard Smith (on its own without John or Philip)
“RICHARD JOHN PHILIP SMITH”	Any designs with “Richard John Philip Smith” (or plurals/possessives of these names) in that word order in the owner’s name.	Richard Philip John Smith
“G MART” OR G*MART	Any designs with G MART as an exact phrase or variations such as GMART, G-MART or GREATMART, etc., in the owner’s name.	Bigmart
COMPANY PTY LTD	Any designs with COMPANY and PTY and LTD in the owner’s name.	Company Company Ltd Company Proprietary Limited Company Inc.

IP Australia’s Guide to Searching the Name Field (CC-BY 4.0)

Classification Codes

As discussed in Chapters 2 and 3, each design application is classified based on the product disclosed in an application. Design applications are allocated classification codes to assist in searching for the same and similar types of products. To search designs independent of classification codes, leave this field blank. To search a code (class, sub-class or sub-sub-class), enter a class number or include multiple classes separated by spaces.

The techniques for searching classification codes are detailed in the table below.

Search	Will find	Will not find
12	Designs classified in class 12, including any sub and sub-sub classes within class 12.	Designs that are not classified in class 12.
12-06	Designs classified in sub-class 12-06, including any sub-sub classes within 12-06.	Designs that are not classified in sub-class 12-06, e.g. 12-01.
12-06A	Designs classified in sub-sub-class 12-06A.	Designs that are not classified in sub-sub-class 12-06A, e.g. 12-06C.
12-06A, 12-06C	Designs classified in either sub-sub-class 12-06A or 12-06C	Designs that are not classified in either sub-sub-class listed, e.g. 12-06B.

IP Australia’s Guide to Searching the Classification Code Field (CC-BY 4.0)

The Classification Lookup assists in searching classification codes. Click on the Classification Codes button to the right of the field. This will open a new window within the search page.

Enter a class number or keyword at the top of the window to filter the results. Add relevant classification codes to the search by clicking the + icon at any class level. Click on a selected class to remove it from the selection list. To confirm a selection of codes, click the confirmation button. Clicking this button returns the Advanced Search page with the selected codes added.

To remove the classes selected, click on the ‘x’ icon after each code.

Product Name

Design can be searched based on its product name. To search product names, type a product name into the search field. Remember, applicants choose how to describe the product when drafting the application. Results can, therefore, vary. For example, an applicant filling out the application for a design pertaining to a car could describe the product as either a ‘car’, ‘automobile’ or ‘vehicle’. Relevant results may be missed due to spelling or terminology differences. Try different spellings or synonyms. For example, when searching for products called a “sofa”, also try “couch” or “lounge.” Classification codes can be used in conjunction with a product name search to achieve more targeted results. For example, use the classification code 06-01 when searching for a chair design. The code could return results for couches and other designs for seating.

The product name field is the first text field on this page.

• If an exact phrase is desired, enclose it in quotation marks. For example, searching for “office chair” will filter results to show only records that contain that exact phrase.
• Wildcards including ‘*’ ‘?’ or ‘@’ can be used in this field to represent unknown characters. The wildcard ‘?’ replaces a single character, and ‘*’ replaces zero or more characters. For example, searching for *chair can return results like ‘office chair’ or ‘armchair’.
• Boolean operators like AND, OR, and NOT can help refine results and help search across multiple fields (for example, to include or exclude defined criteria).

The techniques for searching product names are detailed in the table below.

Search	Will find	Will not find
LIGHT	Any designs containing the word LIGHT or its plural in their product name:  Light fixture Fitting for a light Table light Table lights	Designs where LIGHT is part of a word in the product name:  Lighting Lightbar Lighter Nightlight Headlight Uplight Striplight
LIGHT FIXTURE	Any designs containing the word LIGHT and the word FIXTURE (or their plurals) in their product name, in any order:  Light fixture Fixture for a light Lights with convertible fixture	Any variations on the words themselves or products names with only one or some of the words searched:  Lighting fixtures Nightlight batten fix
“LIGHT FIXTURE”	Designs containing the words LIGHT FIXTURE, or their plurals, in their product name, in that order:  Light fixture Light fixtures for lamps	Variations on the words or their order:  Fixture for a light Batten fixture light
Light OR fixture The operators AND OR and NOT must be in all capital letters.	Any designs containing the word LIGHT or containing the word FIXTURE (or their plurals) in its product name:  Light Fixture Light fixtures Fixture for a light Light with convertible fixture	Any variations on the words themselves:  Lighting Nightlight Batten fix
Light NOT fixture The operators AND OR and NOT must be in all capital letters.	Any designs containing the word LIGHT (or its plural), but excluding any products containing the word FIXTURE in its product name:  Light Exterior light Light fitting A set of light fittings	Fixture Light fixture Fixture for a light Light with convertible fixture
Light* The wildcard * (asterisk) substitutes for zero or more characters.	Light Lights Lighting Lightbar Lightweight Lighter Exterior light Light fixture	Nightlight Headlight Gaslight Uplight Striplight Foglight Spotlight
*Light The wildcard * (asterisk) substitutes for zero or more characters	Nightlight Headlight Gaslight Uplight Striplight Foglight Spotlight Exterior light Light fixture	Lighting Lightweight Lighter
L?ght The wildcard ? (question mark) substitutes for a single character	Light Lyght	Lite Lighting Lighter Light

IP Australia’s Guide to Searching the Product Name Field (CC-BY 4.0)

Dates

Each application has associated dates relating to events experienced during its lifecycle. Searching date information is beneficial when narrowing down search results. The date field enables searching across different categories and ranges of dates. Dates can relate to events that happened in the past (e.g. when an application was filed with IP Australia) and future events (e.g. when a registered design will lapse).

The different dates associated with designs include:

Date	Description
Priority	The default priority date for a design is the date of filing the application for the Design in Australia. This date may be earlier if there was an application for the same design filed in a Convention Country OR the design was excluded from an earlier application in Australia.
Certified	The date when the certificate of examination was issued for this design.
Filed	The date the design met the minimum filing requirements.
Currently registered until	The date the design will cease, unless the design can be and is renewed for a further period or the term of its registration is otherwise ended.
Maximum registration period	The latest possible date the design will cease. Typically, this date will be 10 years from the filing date of the design application.
Published	The date the design’s full details were made available on the Register of Designs because the applicant requested for this design to be published instead of registered.  Note: This means the design cannot be certified or enforced.
Refused	The date a design was deemed unable to proceed to registration or publication.
Registered	The date a design had its Certificate of Registration issued and had its representations made available to the public through the Register of Designs.  Note that the term of registration is not calculated from the Registered date.  Refer to the “Currently registered until” date to determine when the term of registration will end (unless renewed or otherwise ended).
Withdrawn	The date a design’s applicant’s written notice was received to withdraw the application.
Lapsed	The date an application reached the end of the period of time available to meet the requirements for registration or publication.
Ceased	The date registration ended for a design. This can be because the design reached the end of its possible registration term, registration was not renewed, the outcome of examination was adverse, a required fee was not paid, or upon other legislative bases.
Revoked	The date the design was revoked. This can be following an adverse examination, because the owner surrendered the design, on grounds relating to entitled persons, or upon other legislative bases.

IP Australia’s Guide to Date Indicators (CC-BY 4.0)

Searching within the date field first requires the selection of the desired event. Use the dropdown list to select the desired event to search. Then, use the two adjacent boxes to select the time frame. The two fields designate a ‘from’ date and a ‘to’ date. Either box or both boxes can be utilised. Therefore, designs before or after that date can be searched. Alternatively, designs between specific dates can be searched.

Dates can be inputted in two ways: with the calendar select tool or by typing the relevant dates. All date information is in the format YYYY-MM-DD. There are various ways to select dates, either a year, a month and year, or a specific date. Typing a year (2022) into the ‘from’ field will search from the beginning of that year (i.e., 1 January 2022). Equally, searching a specific month (2022-02) in the ‘from’ field will search from the beginning of that month (i.e., 1 February 2022). On the other hand, typing a year (2023) or month (2023-01) into the ‘to’ field will search until the end of that year (i.e., 31/12/2023) or the end of the month (i.e., 31/1/2023).

Status

Remember, as an application goes through the registration process, it will encounter many different events. A design application will be categorised and assigned a status as they happen. This information will continuously change in the database when events are reached. By default, the system will not filter results based on status information — that is, all records will be returned independent of status. The status field can, therefore, be used to filter results.

To select a status, use the dropdown box. The different statuses are categorised under four main headings: ‘Pending’, ‘Registered/Certified’, ‘Published’ and ‘Currently Not In Force’. These headings indicate help to group the status indicators by their effect.

The various status indicators are described below.

Status	Description
Ceased	The design registration has terminated. A design is ‘Ceased’ when: the term of registration has ended; the registration was not renewed; the design was examined and not certified; a required fee (e.g. examination fee) was not paid; or other legislative bases applied.
Certified	Registration of the design has been found valid through examination by IP Australia. Rights in the design are now legally enforceable.
Converted	The design application was filed under the 1906 Designs Act and, at the applicant’s request, is now treated as though it was filed under the 2003 act. See the reference to the design number it was converted to.
Filed	The design application has met the minimum filing requirements.
Lapsed	The design application has not met requirements for registration or publication in the time permitted.
Published	The applicant requested for this design to be published instead of registered. This means the design’s full details have been made available on the Register of Designs, but the design cannot be certified or enforced.
Refused	The design or application was deemed unable to proceed to registration or publication, and so was Refused.
Registered	The design’s full details have been made available on the Register of Designs, but has not been examined or certified. The design owner or a third party may request or have already requested examination of this design.
Revoked	The design registration has been deemed invalid. This may be following an adverse examination; upon surrender by the owner; on grounds relating to entitled persons; or other legislative bases.
Withdrawn	The applicant has requested that the application, or design within, does not proceed to registration or publication.

IP Australia’s Guide to Status Indicators (CC-BY 4.0)

Indicators

In addition to the status information, there are other indicators that IP Australia assigns to applications.

These indicators are sub-categories of the leading status indicators and include:

Indicator	Description
Awaiting formalities	A request for registration or publication has been received.
Under formalities	The design application is undergoing an assessment for registration or publication.
Awaiting examination	Examination of the design has been requested.
Under examination	The validity of the registration of the design is being considered or the office is awaiting a response to an examination from the design’s owner.
In grace period	When the initial five year registration period of a design has ended and the design owner has not requested a renewal, there is a grace period of an additional six months where the owner can still request a renewal before the design ceases.

IP Australia’s Guide to Other Indicators (CC-BY 4.0)

These indicators are presented on each application within parentheses. For example, when an applicant has filed an application and is pending a formalities assessment, its status will be listed as ‘Filed (awaiting formalities)’. These indicators are helpful to determine what has been filed but yet to be published on the Register (for the purposes of s 15).

Statement of Newness and Distinctiveness

An applicant can indicate and highlight visual features of a product’s design that give it a distinctive character. The statement of newness and distinctiveness is searchable as a text field. The field will perform a search on words contained in the statement and can involve the use of wildcards, Boolean operators and double quotation marks.

Address for Service

When filing an application, the applicant or agent must nominate where documents relating to the application will be served (correspondence sent to an address). This text field can perform a text search across the name of the entity that will receive the documents and their address. Designs that are yet to be registered, never registered, and no longer registered will only have a contact name available for searching.

Performing a search in this text field is supported by wildcards, Boolean operators and double quotation marks. In addition, a search in this field will ignore punctuation. However, it will not return alternative spellings or plurals.

Searching the Register

Anyone can use Australian Design Search to search the Register for designs. Looking up what designs are registered can be interesting and fun. However, locating relevant prior art amongst over 240,000 design applications and registrations requires careful consideration of how to search the system. There are different kinds of searches one can perform on the system. Practitioners will perform different searches at various times during the design lifecycle. The results of a search can help inform when applying for registration. Different searches require the use of the fields described in different ways. The following sections will describe the different searches one may perform before exploring how to build a search strategy and perform a search on the system.

Types of Searches

The types of searches practitioners perform include:

1. Registrability Search
2. Development of the Prior Art Base Search
3. Freedom to Operate Search
4. Competitor Search
5. Status Search

A registrability search is one that an applicant or their agent may perform to understand whether a design would likely be registered (that is, meet the requirements under the Act). This search would likely be performed before an application is filed with IP Australia. The search focuses on the visual features of a design and whether identical or similar designs can be located in the prior art. The search is similar to what an examiner will perform during an examination. Therefore, locating designs needs consideration of the s 19 factors. The results of this search will likely inform an opinion on whether registration and certification would be successful and any filing strategies to ensure certification.

As discussed in Chapter 5, understanding the development of the prior art base for the design is an essential factor in assessing the distinctiveness of a design.^[20]. The Register can be searched to understand the prior art for a design. Such a search investigates the existing design landscape for a product. Remember, minor differences may constitute a distinctive design when the landscape is crowded. This search focuses on looking for products that are the same as the design seeking protection. Again, the results of this search can inform filing strategies. For example, if the prior art base is well-developed, representations and statements of newness and distinctiveness filed with the application may highlight any differences.

A freedom-to-operate search is very different from a registrability search. This search can be performed independently of whether protection is being sought for a design. A freedom-to-operate search is focused on looking for prior rights to a design. A designer may yet to launch a product, and they wish to understand whether it would likely infringe another party’s rights to a design. Therefore, a designer or their representative is looking for prior rights to an identical or similar design protected under the Act. Infringement will be covered in more detail in Chapter 10.

Valuable information can be ascertained when searching the design portfolios of companies or individuals. This search focuses on locating designs filed by individual applicants, companies or designers. Monitoring the design portfolio of companies and designers can yield valuable data and information for the purpose of business intelligence. The results of this search can also inform the results of a prior art base search.

The Register can be monitored to detect changes in individual applications and registrations. A status search focuses on individual design applications and registrations of interest. For example, a design registration may be monitored to reveal when it has been certified. This search helps understand the legal rights to a design and whether third-party requests for examination are required.

Each search type will utilise the Australian Design Search system differently. However, it is essential to note that these types of searches can be performed across several different search engines or other sources of information and publications (e.g. social media). Given section 15 sets the prior art to include international publications, any online databases can be searched. For example, searching design registers of intellectual property offices worldwide may be required. Other online design databases include WIPO’s Global Design Database or the EUIPO’s DESIGNview.

Search Strategy

Any search should start with determining the purpose of the search. Determining the purpose will help choose the type of search to perform. Each search will combine advanced search fields differently to locate relevant designs. For example:

A registrability search will utilise the fields: product name, classification codes and names (current owner, previous owner, designer)

A Prior Art Development Search will utilise the fields: product name, names (current owner, previous owner, designer), date (priority)

A Freedom to Operate search will utilise the fields: product name, classification codes, status, date (priority)

Competitor Search will utilise the fields: names (current owner, previous owner, designer)

Status Search will utilise the fields: design numbers, other indicators

Search Stages

There are seven broad steps in searching: (1) define the search objective, (2) collect search terms, (3) conduct the search, (4) review results, (5) refinement, (6) management, and (6) document findings.

Search Objective

When undertaking a search, define the objective of the search. The different types of searches discussed above may prove helpful at this stage. Answer the questions:

• Do potentially similar designs need checking before registering another design?
• Do prior rights to designs need checking before launching a new product?
• Do the designs of a particular product need researching?
• Do particular designers or companies need research?

Collecting Search Terms

After deciding the type of search to perform, gather all potential terms or codes to search in each field. Brainstorm product names (and alternatives), classification codes, designer names, and any other relevant terms that could be associated with the design. If the type of product or design is unfamiliar, determine the classification code first. This will initially narrow down the search.

Conducting the Search

The primary way to search the register is to perform a text search (like using a search engine). Most fields will search text associated with design applications and registrations. Once all search criteria have been entered, use the Search button (or Enter key) to execute the search. If the entered search criteria need saving without executing the search, click the ‘Save’ button to save the criteria in the My Searches list (described in more detail below). To clear all search criteria from the page, use the “Clear” button.

When conducting a search to find similar designs or to understand the prior art base (and potentially its state of development), the focus will be on key visual features. However, searching the system is primarily structured over the product the design relates to.

Remember, an applicant must clearly identify a product to satisfy section 6 and accurately classify the application. Unfortunately, there are no fields to search the visual features of a design. Therefore, the product name and classification code fields become crucial to the search strategy. When searching individual records, looking for similar prior based on visual inspection of design representations.

During this stage and equally when collecting search terms, it is crucial to understand the design and the product that it relates to. This can help to produce relevant search terms. There could be similar designs in similarly named products. For example, a figurine may be described as a ‘toy’, ‘child’s toy’, ‘doll’ or any combination. In this case, the Australian Design Classification Code 21-01B may be more helpful to search for similar designs.

Depending on the type of search conducted, be mindful of the concepts of the overall appearance of a design and the overall impression left by a design (for the purpose of s 15, 16 and 19). The former is relevant for determining the subject matter of a design, while the latter is important for determining the newness and distinctiveness of a design. An applicant may submit representations that emphasise certain visual features and other elements that are more extraneous or those added for reference purposes only (i.e., elements indicated with dotted lines). Such visual emphasis should be kept in mind when inspecting records.

Start simple. If there is a particular design or product name of interest, enter it into the product name field. This basic search is handy in the exploratory phase to see the breadth of designs for a particular product.

Introduce more fields next. The type of search will require the utilisation of different search criteria. For example, when conducting a registrability search, the product name and classification code fields will initially be used to find identical and similar designs. The search will not only seek similar designs but will also seek to understand the development of the prior art base. Ultimately, the search emulates an examiner’s investigations — considering the product bearing their design, the key visual features of the design and whether the familiar person would see the design as new and distinctive.^[21]

Third parties may need to be considered, including competitors or similar designers. Third parties may have submitted relevant prior art in a design application. In a separate search, utilise the name field to yield relevant prior art.

Performing a Freedom to Operate search is similar to a Registrability search in that identical or similar designs are the target. An initial search may utilise the product name and classification codes. However, this search will require results of only protected designs. Restrict the search based on status to ‘Registered’ and ‘Certified’ designs. Refining results can be achieved directly from the Advanced Search page or using the filtering tool on the results page. To refine the results, select ‘registered’ and ‘certified’ on the left-hand side panel. The results page will be automatically refreshed with the new results.

During any search, individual records may need monitoring. For example, a design may be registered, but knowing if and when it becomes certified may become necessary. A status search is helpful here. Input design numbers into the design number field to periodically check their status. In addition, refining results based on the ‘other indicators’ field may be helpful when investigating which designs are awaiting examination or are currently being examined.

Remember, the prior art base is defined widely under s 15. Therefore, devote time to investigating other design registers and other online platforms (e.g., social media).

Review the Results

When performing a search on the Advanced Search page, a results count will appear above the search button and dynamically be refreshed each time search criteria are entered. Entering broad search criteria can return many records. By default, the system will restrict results to the first 10,000 records. A zero will be displayed if no records are found and the search button cannot be pressed.

Click the ‘Search’ button to explore the records returned in the search. By default, the results page will display individual records that match the search criteria in descending order (of design number). The order can be changed with the ‘sort by’ button on the left-hand side. Explore the interactive below to explore the features of the results page.

The results page will remind you of the search criteria and the number of results returned. To add more search criteria, click the ‘Refine search’ button. Clicking this button returns the Advanced Search page with the previous search criteria entered. Additional search criteria can now be added to refine the search.

Scan through the brief information provided for each entry in the search results. Look for the ones that seem most relevant based on the search objective. Details of the design can be viewed when hovering over the design number. By default, the system will display the status, product name, classification codes, owner name and priority date of the design. For individual designs of interest, click on them to expand into a detailed view.

When reviewing results, records are displayed in a grid or list view. The grid view is the default view when searching for the first time. Under the grid view, the representations of the design take centre stage. The size of the representation can be changed to be larger or smaller using the slider at the top of the page. More information can be presented in the list view. To quickly toggle between grip and list view, select the list icon above the first result on the results page.

The default view and fields to display on the list view can be changed under ‘user preferences’.

Spend time interpreting the results. Adjustments to the search strategy may be required based on what is found.

Refinement

If too many irrelevant results are returned, refine the search. Add specific search terms and design codes, adjust filters, or search using different fields or terms. Conversely, if too few results are returned, broaden the search criteria. Remove some filters or try different search terms. Restricting the search early on could result in pertinent information being missed.

When conducting a Development of the Prior Art Base search, seek to emulate a search an examiner may perform. Therefore, refinement should be introduced after a broad search based on filing dates to understand the development of the prior art. Refining the search this way can be especially useful when monitoring new designs in a particular classification or researching historical designs.

As discussed above, results can be refined based on status within the results page. Results can also be filtered based on the classification codes present. When performing a search, all the classification codes will be listed on the results page in descending order within the filtering tool (see the left-hand side filter panel). To refine the results, select a class, subclass or sub-subclass using the checkbox. The results page will be automatically refreshed with the new results.

Managing Searching

When reviewing results, individual design records can be saved to a dedicated list with the system. These records are saved for further inspection or later documentation. Within the results page or individual records, click on the flag icon. When flagging a design, it will be added to a dedicated space called ‘My List’. Designs can also be removed from the list by re-clicking the flag.

 

 

To flag all the records on a given results page, switch to list view and hover over the ‘Extract’ label. Use the ‘All’ checkbox that appears to add all the records on that page to My List.

The ‘My List’ page lists all the flagged designs. The list can be sorted based on accessing or descending design number, product name, status and priority date. In addition, individual comments can be written on each record. Importantly, the records contained within My List will be included in search reports generated (described below). Therefore, the My List function helps document and report on search results. To remove all records from the list, hover over the ‘Extract’ label and select the ‘All’ checkbox. The space will then turn blank.

As searches are performed or saved, the system automatically remembers the different searches conducted. To view this information, navigate to ‘My Searches’, which presents a list of search criteria utilised and a results count. Individual searches can be revisited using the view results button, edited with the refine search button or removed from the list with the delete button. Again, the searches contained within My Searches will be included in search reports generated from the system to assist in documentation.

 

Note: any search results refined using the filtering tool (refinement based on status or classification) will not appear in this list.

Search criteria within this list can be combined based on logic operators. To combine two searches, click the checkboxes under the ‘Combine’ label against each search criteria. Use the AND, OR, and NOT, which will appear on the left-hand side to combine. A new search criterion will appear on the list designating the desired combination.

It is important to note that the system will only remember the information contained in My List and My Searches for a limited time. When closing a browser or cookies are not enabled, the searches performed and any flagged designs will disappear. However, users can save their work in what is known as a ‘search space’. A search space saves the information contained in My List and My Searches. Search spaces can be saved anytime under the ‘Save current space’ menu option. IP Australia retains search spaces for 100 days since the last time it was accessed.

Users are prompted to enter a search space name and a reference key. Think of these as a username and a password. The chosen space name and reference key must be unique to save the space.

Returning to a saved space requires entry of the search space name and reference key within the menu option ‘Open existing space’.

Note: search results within a search space remain static and will only update if the searches are rerun at a new point in time.^[22]

Managing multiple searches becomes easier when utilising the save space function — especially when multiple searches may be unrelated. One search session can be performed and then saved before moving on to another (and then saving the additional space). If a blank search space is desired after saving a search space, select the ‘Clear current space’ under the drop-down menu. This function will clear out the information contained in My List or My Searches.

Documenting a Search

It is vital to keep a record of all relevant searches and the results. Whether downloading documents or taking notes with registration numbers and status information, maintaining a log can be invaluable for future reference or sharing with others.

To document a search within ADS, the system supports exporting results in two different formats – a Portable Document Format (PDF) document or an Excel spreadsheet. A PDF report contains the information from the My List page, search criteria listed in My Searches and individual record details of designs flagged for inclusion in My List. The PDF report can be downloaded from the drop-down menu.

The menu option will ask what information is to be included in the report with the added option of larger design representations.

 

Alternatively, search data can be exported in a Microsoft Excel format. An Excel spreadsheet can be exported from the results page, containing the results of that search. However, the number of records exported is capped at 10,000 records at a time. The spreadsheet contains all the data on each record, including a representation of the design and a link to the record on the system.

Data Accuracy

Searching the Register should be done carefully. Remember, an applicant is responsible for filing an application with IP Australia. Records can, therefore, contain errors or misspellings. IP Australia declares that ‘[it] does not make any representation or warranty that the information the System provides is reliable, adequate, current, accurate or complete or that access to the information will be uninterrupted, timely or secure’.^[23] This disclaimer is reproduced in each PDF report export.

IP Australia also sets out additional considering when searching information on the Register,^[24] specifically:

• The system only provides information on design rights applied for in Australia.
• Designs shown as ceased or lapsed on the system may be restored at a later date under the Act.
• Current or future legal actions may impact the status of individual designs.

Information in the system can change from time to time. The accuracy and completeness of the information should be kept in mind whenever searching. When monitoring a particular design or classification for changes or new entries, consider revisiting the search system periodically. Remember, an international applicant can file an application in Australia to claim priority based on an earlier application in a Convention Country. Therefore, the same or similar designs could emerge within six-month periods. Creating Search Spaces can be helpful. Returning to a search space can update the results automatically and return relevant results at a later date.