Two recent decisions by IP Australia have delivered a blow to designers seeking to protect digital interfaces. The regulator has confirmed that Graphical User Interfaces (GUIs) are not certifiable as designs under the Designs Act, citing their "transient" nature and a narrow interpretation of what constitutes a "product."
This stance affects any business developing apps, software interfaces, or smart devices. While the Federal Government is considering legislative reform to modernise these definitions, the current landscape requires careful navigation.
In this Insight, we unpack the implications of the DRiV and GEA decisions and what they mean for your IP strategy while we wait for the law to catch up.
Key takeaways
The "At Rest" rule: IP Australia has affirmed (in DRiV and GEA) that GUIs do not provide visual features for a design because products must be reviewed "at rest." Since digital displays are transient, they currently fail this test.
Legislative: The Federal Government is reviewing amendments to specifically include virtual designs (like GUIs) in the definition of a "product." Draft legislation is expected in late 2025.
Strategic filing: In the interim, applicants must be highly strategic in their use of "product" titles and characterisation during the examination process to avoid rejection.
Key stakeholders impacted:
The "At Rest" problem
Under the Designs Act 2003 (Cth), a design is defined as the overall appearance of a product.
In the recent DRiV decision (involving electronic devices displaying logos) and the GEA decision (involving a data layout for mining equipment), IP Australia refused to certify the designs. The delegate relied on a traditional interpretation of the law:
Manufacturing definition: The Act defines a product as a "thing that is manufactured or handmade." The delegate argued that in everyday speech, one does not "manufacture" a digital display.
Transient nature: The delegate upheld the principle that a product must be assessed "at rest." A digital interface that disappears when the device is turned off is considered transient, not a permanent visual feature of the hardware.
Historical intent: The decision leaned heavily on a 1995 ALRC Report 74, which recommended screen displays should not be protected, despite more recent UK decisions that have recognised icons as "articles."
Strategic impact: This confirms that, for now, attempting to protect a GUI as a distinct product in isolation is likely to fail examination in Australia. The argument that a GUI "comes into existence" (and therefore results in a design) when displayed was rejected in favour of the "at rest" orthodoxy.
Inconsistencies depending on product type
While the DRiV and GEA decisions seem to close the door, IP Australia’s application of policy has created some confusion and potential loopholes.
There is a longstanding policy against certifying GUIs for mobile devices. However, purely digital designs are occasionally certified when tied to specific hardware.
The cooking appliance exception: For example, in January 2024, IP Australia certified a "User Interface For A Cooking Appliance." The representation appeared to be a purely digital design visible only when the appliance was switched on (i.e., not "at rest").
What this means for you: The product’s characterisation matters. IP Australia appears more willing to certify a user interface when it is tied to a specific "non-mobile" appliance (such as an oven) rather than to a generic screen (such as a tablet or phone). This inconsistency creates a complex environment in which your product title could determine the success of your application.
The friction between modern digital design and 20-year-old legislation has been recognised. The Federal Government is currently considering legislative amendments to modernise the definition of "product" to specifically include virtual designs and GUIs.
Timeline: Further updates regarding draft legislation are expected in late 2025.
The unknown: A critical detail for businesses will be the transitional provisions. Will the new laws allow you to capture GUIs filed (and potentially rejected) before the change date? This remains to be seen.
Action items to take now:
While we await legislative clarity, businesses should not abandon protection for digital assets; they must adjust their strategy accordingly.
Review product titles: When filing design applications, careful thought must be given to the product title. Linking the GUI to specific, non-generic hardware (where possible) may increase the likelihood of certification compared with a generic "display screen" claim.
Monitor the reform: Keep a close watch on the draft legislation expected in late 2025. This will be the trigger to potentially broaden your filing strategy.
Seek specialist advice: The distinction between a rejectable "mobile GUI" and a certifiable "appliance interface" is fine and inconsistent. Do not rely on general filing strategies; navigate the examination process with specific advice on IP Australia's current internal logic.
