22/05/2020

IP Australia called for public feedback on proposals to reform the Australian designs system in late 2019. Assisted by the feedback received, IP Australia has now indicated which proposals will be progressed in phase 1 of its ‘designs initiative’ package.

We have reviewed IP Australia’s full response to the public consultation and set out what you need to know, below.

What is phase 1?

IP Australia says phase 1 aims to deliver early benefits to designers. Phase 2 will then be a holistic review of the design system overall which will consider broad and longer-term reforms.

Which proposals will progress in phase 1?

  • 12-month grace period – IP Australia intends to introduce an automatic 12-month grace period from a design’s priority date. In practice, this will mean that any self-disclosure within 12 months of a design’s priority date will not invalidate the design.
  • Prior use exemption – A prior use exemption to infringement, like that captured in section 119 of the Patents Act 1990, will be introduced. This will protect third parties against inadvertently infringing someone else’s registered design if the third party started using its design before the priority date of the registered design.
  • Clarification of ‘informed user’ – Section 19(4) of the Designs Act 2003 (the Act) specifies that, when assessing whether a design is substantially similar in overall impression to another design, the person making the decision must apply the standard of the ‘informed user’. In practice, there has been some uncertainty as to whether the ‘informed user’ must be an actual user of the product in question or whether it need only be someone familiar with the product. IP Australia proposes to amend the Act to clarify that the ‘informed user’ need not be an actual user of the product. This will reflect the approach taken by the courts.
  • Removal of publication option – There will no longer be an option to merely publish a design, without registering it.
  • Automatic request to register – The requirement to request registration of a design will be removed. Instead, a request for registration will automatically be made six months after filing the application.
  • No infringement prior to publication – IP Australia notes that currently, an innocent infringer can receive relief if they are unaware a design is registered at the time of infringement and has taken all relevant steps to ascertain whether it is registered. However, use that occurs between the filing and registration date has been held to be ineligible. To correct this, IP Australia proposes to ensure a design cannot be infringed between the time of filing and registration, that is, prior to publication.

What happens next?

IP Australia intends to release a draft of the legislation implementing these changes for public comment in the second half of 2020.

What about the other proposals?

At this stage, despite being persuaded by feedback submitted by interested parties about some of these proposals, IP Australia has indicated that there will not be any changes made to the protection of partial and virtual designs; deferred publication of designs; nor to use of ‘registered’ and ‘certified’ terminology.

 

Authors: Prianca Moodley and Louise Buckingham

Expertise Area
""

Our COVID-19 hub collates important articles and legal advice on various aspects of COVID-19 on how it may impact your business.