Registrability and Practical Filing Strategies for Australia, Europe and the United States

When considering whether a virtual design can be protected as a registered design, the answer still depends on where you file.

In the EU and the United States, protection for screen-based designs is generally achievable if the representations are prepared correctly. In Australia, however, registration is often possible, but certification, and therefore meaningful enforceability, is where many virtual design filings ultimately fail.

In this article we discuss how Australian law reached its current position on virtual designs, the current registrability landscape in Australia compared with the EU and US and practical filing strategies and common pitfalls for applications.

What Counts as a “Virtual Design”?

“Virtual designs” are visual elements created for, and only visible in, an electronic environment. They include Graphical User Interfaces (GUI’s), icons, typefaces, animated transitions, and increasingly, immersive or mixed‑reality elements. Their common feature is “transience”, they appear when a device is powered on and a particular software state is invoked, and they may disappear entirely when the device is “off” or the state changes.

That temporary nature is not merely technical, it is legally significant in Australia because the Designs Act is built around protecting the overall appearance of a “product” rather than a digital experience.

Australia’s Journey to “Registration Without Teeth”

The Legal Framework

Under the Australian Designs Act, a registered design protects the overall appearance of a product, rather than how the product works. “Visual features” include shape, configuration, pattern and ornamentation, but not the feel of a product, its materials, repetitive patterns, or function.

A “product” is defined as “a thing that is manufactured or handmade”. A design must be new and distinctive compared with the prior art base as at the priority date, assessed qualitatively by overall impression.

The recurring question for virtual designs is whether a transient on‑screen image is a visual feature of the product (the screen/device), or merely something the product can display when in use.

This question sits at the centre of Australia’s difficulty with virtual designs.

Early Resistance: The “Fleeting Display” Problem

The Australian Designs Office confronted the issue early in Comshare Inc [1991] ADO 2.

In that case, an attempt to register computer screen icons failed. The Office treated the icons as fleeting or transitory, concluding they were not the appearance of a product in the relevant sense.

The ALRC’s 1995 report (Report 74) later took a similar view, which described screen displays as a use of a product rather than the product itself, and recommended against design protection for screen displays.

Notably, despite strong policy statements, the legislation did not end up with an express prohibition – so applicants kept filing.

The Turning Point: Apple and the “Product at Rest” analysis

The modern Australian position largely stems from Apple Inc [2017] ADO 6.

In that decision, the Australian Designs Delegate accepted that a “display screen” can be a product, because it is manufactured. However, the Delegate concluded that images appearing on the screen are not a quality or attribute of the display screen itself; they are manifestations of software working with hardware, sensationally described as “a stream of electrons”.

This reasoning led to the “product at rest” approach. Under this approach:

• The product is assessed as if it were powered off
• A powered off display is blank
• The GUI therefore disappears from consideration

What remains is simply the display device itself, which is rarely new or distinctive.

The IP Australia’s examination manual continues to reflect this approach in its section on “Variable visual features” confirming that transitory screen images are not considered a visual feature of a display screen or monitor.

Recent Decisions: Reinforcing the Position

Two more recent Designs Office decisions reaffirm the Apple‑based approach: DRiV IP, LLC [2024] ADO 3 (3 October 2024) and GEA Westfalia Separator Group GmbH [2025] ADO 1 (17 June 2025).

In both cases, virtual design registrations were revoked on the basis that:

• a “product” must be manufactured or handmade
• transient digital images do not themselves constitute a product
• The “product at rest” analysis for designs was correct.

In DRiV, the hearing officer framed the “core question” as whether designs should be examined “at rest”, with the implication that on‑screen features are ignored; the officer concluded the “at rest” approach was correct.

In GEA, the officer’s reasoning is summarised as drawing a line between disclosing “visual features” and disclosing “a product bearing visual features”.

Both DRiV and GEA concluded that that GUI elements do not provide qualifying visual features of a product under the current legislation and practice guidelines.

Reform on the Horizon: But Not Here yet

IP Australia has conducted several public consultations on virtual designs, including major reviews in 2019–2020 and 2023.

The 2023 consultation paper proposed expanding the definition of “product” to include a virtual product, defined as an intangible thing whose use results in the display of visual features through electronic means.

The overwhelming response from attorneys and industry representatives has repeatedly expressed strong support of Design protection for virtual designs in a technology neutral manner, a position with which IP Australia themselves are on record as agreeing with, stating that:

• “… protection should not be linked to physical products” and that the path forward for protection of virtual designs should be “technology neutral” [IP Australia Response to submissions from the 2019-20 Review]; and
• “Under the current designs system, it is not possible to protect visual features that are only present on a product when it is switched on or in its active state. It is therefore necessary to broaden the definition of visual features to protect virtual designs.”  [Consultation paper for the 2023 Review]

However, to date, while the public record shows policy intent and strong support from stakeholders, Australia remains in a transitional and commercially awkward state: many GUI‑type designs are registered, but certification is still the choke point for enforceability under current practice.

Europe: A Clearer Path for Virtual Designs

The European Union is the most straightforward jurisdiction to explain to clients.

Protection for GUIs, icons and sequences is generally available, and the substantive examination of the virtual design is not forced into connection with a physical article nor a powered‑off fiction. European Unition Intellectual Property Office (EUIPO) guidance goes further by expressly including animated icons and animated GUIs.

A key practical point is the requirement that sequential views be “visually related” (they must share features in common), so a sequence reads as one design in different states rather than multiple unrelated designs bundled into one application. The common practice materials (EUIPN) are a useful reference for representation hygiene: view selection, consistent disclaimers, neutral backgrounds, and image quality.

The main recent development is legislative: Regulation (EU) 2024/2822 and the recast Directive (EU) 2024/2823 were published in the Official Journal on 18 November 2024, and EUIPO maintains a reform hub summarising the package and its phased implementation.

For most filers, the practical point is that Europe is leaning further into digital‑age subject matter, not away from it.

United States: Formalistic but Functional

In the US, virtual designs are protected through design patents. The structural requirement is that the claimed design be tied to an “article of manufacture”. In GUI and icon cases, this is typically handled by depicting the design on a display screen, a portion of a display, or a device outline, with unclaimed matter shown in broken lines.

The key recent development is USPTO “Supplemental Guidance” on examination of design patent applications related to computer‑generated electronic images (including icons and GUIs), published in the Federal Register. The guidance is directed to statutory subject matter analysis and reinforces the need to anchor the claimed design to an article of manufacture in a way that is clear from the drawings.

What About Other Jurisdictions?

Beyond the AU–EU–US comparison, it is worth noting that several other of Australia’s major trading partners now treat virtual designs as registrable, and enforceable, in their own right, without requiring applicants to anchor the design to a particular physical product.

For example, the United Kingdom, Japan and South Korea each recognise the registrability and enforceability of certain screen-based designs, icons and other graphical imagery as stand‑alone subject matter, albeit with jurisdiction‑specific representation rules and scope limitations.

By contrast, other systems take a more ‘product‑tethered’ route: Canada, China and Singapore generally support registration and enforcement of virtual designs where the claimed visual features are presented as applied to, or embodied in, a physical product, most commonly a display screen or device, rather than as an untethered graphic in isolation.

Filing strategy: Practical Tips for AU, EU and US

Australia — File Carefully, Certify Strategically

• decide whether the goal is immediate enforceability or portfolio positioning
• naming the product “display screen” or “display screen with GUI” does not resolve the “at rest” issue
• use clear representations with consistent broken lines for unclaimed environment and avoid ambiguity about what is claimed
• treat certification as a strategic decision, not a routine step.

Filing can still make sense for:

• parallel foreign filings
• signalling
• settlement leverage
• future‑proofing if reform lands within the product’s commercial life.

European Union – Representation is Everything

• decide early whether the design is static vs animated early
• confirm the “visually related” requirement is met across the sequence
• keep backgrounds neutral; linework/contrast consistent; avoid bundling distinct screens into one application.

United States – Master the Drawing Conventions

• anchor the GUI/icon to a screen/device outline
• use broken lines to define scope
• plan claim scope: hero screen vs multiple states vs multiple filings
• avoid trying to claim an icon “in the abstract” and avoid inconsistent conventions across drawings.

A Practical Cross‑Border Playbook

For software‑led businesses trading in Australia, the EU and the US, a sensible baseline is:

• Lead with EU and US filings for enforceable coverage, assuming the novelty window is still open.
• File in Australia if it fits the portfolio strategy, but treat certification as a business decision, not a default.
• Build a single “representation pack” that can be adapted: a set of core static screens and (if relevant) a short animated sequence, with consistent broken‑line conventions.

Australia’s Future: Reform on the Horizon?

For now, enforceable design rights for purely virtual designs in Australia remain difficult under the “product at rest” approach.

However, the proposal by IP Australia to recognise “virtual products” signals a serious attempt to modernise the regime and align Australia with major international systems.

If reform proceeds, software-first design teams, particularly those building GUIs, iconography and immersive experiences, may gain access to a clearer, more enforceable registered designs pathway. Until then, applicants should continue to file strategically, including considering physical embodiments where available, and closely monitor the next steps from IP Australia.

Australia’s position is likely to evolve, but until the statute and examination practice are aligned to permit assessment of transient on‑screen features in their active state, the “at rest” doctrine will continue to dominate examination outcomes and the enforceability of virtual designs in Australia.

For More Information about Your Virtual Designs

If you have any questions regarding registration for your virtual designs, please contact Phil Burns (phil.burns@wrays.com.au) who would be happy to assist.