Following on from our article of 14 May 2020, Australian Designs – Changes on the Way, we advise that the Australian Designs Exposure Draft BillRegulations, accompanying draft Explanatory Memorandum and Explanatory Statement have now been released.  IP Australia have invited interested parties to provide comment and Shelston IP has made a submission.

If passed in its proposed form, the Draft Bill will codify many of the recommendations accepted by the Government from the former Advisory Council on Intellectual Property’s (ACIP) review of the Designs System.  Amongst others, these changes include: the introduction of a twelve-month grace period, expanding the existing prior use defence, removal of the formal request for requesting registration, providing exclusive licensees to sue for infringement, and clarifying the meaning of the standard of the informed user.

Notable points

Of note, the Draft Bill provides exclusions to the proposed grace period for two types of publications – publications by the Registrar of Designs, and publications by foreign persons/agencies entrusted with the registration of designs. In both cases, the Explanatory Memorandum advises that publications of these types are not the inadvertent publications that the grace period is intended to protect.

Further, with regard to prior use, it is noted that the Draft Bill omits reference to the prior user activity having occurred in Australia like it does with the equivalent provisions of the Patents Act 1990.

As mentioned in our previous article, there are several proposals that will not be progressing at this time. These include: the protection of partial designs, the protection of virtual, non-physical and active state designs, and the clarification of registered’ and ‘certified’ designs. These proposals remain on IP Australia’s Policy Register and if you wish to provide a submission, IP Australia invite you to do so via the Policy Register.

IP Australia is also working on a new online filing system to make the application process smoother, improving access to information on their website, and exploring further reform measures resulting from our research into the design economy and the role of the design rights system. This includes a series of research reports that are now available online.

Authored by Rodney Dabboussy and Allira Hudson-Gofers

IP Australia has now released its proposals for implementing the recommendations of the Advisory Council on Intellectual Property’s (ACIP) to improve the Australian designs system.

For background, in 2012 ACIP was asked to investigate and improve the effectiveness of the designs system in stimulating innovation by Australian users and the impact the designs system has on economic growth. This review led to the release by ACIP of an Options Paper for public consultation on 3rd December 2014 and a Final Report in 2015.

After considering stakeholder submissions on the recommendations laid out in the Final Report, IP Australia is now proceeding with a number of proposals, the most notable being:

  1.   An automatic grace period of 12 months from the priority date with a prior use defence based on Section 119 of the Patents Act 1990.
  2.   Removal of the requirement to request registration of the design. Registration would now occur six months after the filing the application.
  3.   Removal of the rarely used option of only publishing a design and not registering it.
  4.   Revision of Section 19(4) of the Act to clarify the standard of the informed user consistent with the Multisteps approach.
  5.   Liability for infringement to be removed before Registration (consistent with other IP rights).

Left on the table at this present time are any changes to the protection of partial and virtual designs (e.g. GUI’s), and a formal publication/registration delay process.

IP Australia says that it will release an exposure draft of the proposed Bill and supporting regulations in the second half of 2020. After participating in the stakeholder submissions, Shelston IP welcome these improvements and look forward to them being passed into law.

A full copy of IP Australia’s response can be found here.

Authored by Rodney Dabboussy and Allira Hudson-Gofers