Amendments to the Australian Designs Act
Following on from our earlier article here, the Australian Government has proposed a number of legislative amendments to the Designs Act 2003 to provide more flexibility for designers during the early stages of getting protection and to simplify and clarify aspects of the designs system.
The changes have formed a draft bill which has been released as an exposure draft. We've summarised the key proposals below, mainly concerning grace periods, the removal of publication option, and the right of exclusive licensees. The draft bill and explanatory materials can be found here: https://consultation.ipaustralia.gov.au/policy/designs-bill-2020/.
The proposals introduce a grace period of 12months before the filing date to help protect designers from losing their rights if they happen to publish their design before applying for legal protection. This grace period would cover any publications or uses by the registered owner of the design themselves, or by one of their predecessors in title and also extends to publication or uses by persons or bodies that derived or obtained the design. It does not extend to publications or uses by Australian or overseas designs offices.
In addition to the grace period, Australia looks to introduce a prior use defence. This aims to protect third parties against infringement proceedings should they start using a design before the priority date of a registered design, such as during the grace period of a subsequently filed application.
The Removal of Publication Option
The proposals will allow applicants to effectively delay publication of their design for a prescribed period, which is to be 6 months, from the priority date. Existing publication only options will be removed, aiming to make the process simpler by delaying publication of a new design until businesses are ready to launch in the market and reducing the number of due dates that need to be tracked.
This means that when you file an application, you have two options: 1) request registration which seeks registration as soon as possible; or 2) not request registration which effectively delays registration for the prescribed period from the priority date then the application will proceed automatically to registration at the end of that prescribed period. Alternatively, the Applicant may request registration during the prescribed period.
Once the design application is registered, the Registrar must then make it available to be inspected by the public leading to its publication.
Right of Exclusive Licensee to Bring Infringement Proceedings
The proposals will amend the right to commence an infringement action from only being available to registered owners to include exclusive licensees. This amendment extends this right to exclusive licensees with the goal of ensuring they are able to fully enforce their rights, particularly for those licensees of designs where an overseas owner may have reduced interest in action.
The Informed user vs the familiar person
The Act will also be amended to clarify the standard of the "informed user", a notional person whose characteristics are used by an examiner, hearing officer, or court to assess whether one design is substantially similar in overall impression to another. The clarified standard will be that of a person 'familiar' with the product in question, rather than strictly a user.
Amendments to reflect and enable the continual modernisation of the design application process are also proposed, such as to reduce references to formal requirements based on paper filing and empower the registrar to specify formal requirements by a non-legislative instrument.
Grounds of revocation
The grounds of revocation are proposed to be updated to add that the design may be revoked for an act of fraud, false suggestion or misrepresentation at any stage in the process of obtaining a registered or certified design.
The ground of revocation based on lack of entitlement will be qualified to give the Court discretion not to revoke a design on the basis of a lack of entitlement. This reflects the similar scheme under the Patents Act. This will prevent the possibility of revocation based on error or mistake alone by the true designer, yet retain it for true instances of lack of entitlement resembling theft.
The Act is updated to confirm that a registered design does not cease in the period occurring after the renewal anniversary date and before the date renewal occurs during the renewal grace period. If a design owner pays the renewal fee during the renewal grace period, the registered design remains in force and does not lapse. Failure to pay the renewal fee with the grace period would result in the design registration ceasing on the anniversary date, not on the expiry of the grace period.
These changes are yet to be finally passed by the Australian government, but if they do so they will apply to design applications, proceedings or actions made after commencement.
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