An extensive three year review of Australia's design
legislation has culminated in a final report that makes a number of
recommendations to enhance the current system and address
deficiencies that have come to light since the current legislation
commenced. Recommendations include introduction of a six month
grace period for filing, consideration of virtual designs, and
introduction of border protection measures based on certified
designs. These and other key recommendations are discussed in the
article that follows, and full details are set out in the official
In May 2012, the Australian government requested the Advisory
Council on Intellectual Property (ACIP) review the current
Australian designs system, to assess how well this legislation was
functioning since its commencement in June 2004. The review process
included extensive consultation with a wide range of stakeholders,
resulting in an Issues Paper released in September 2013, followed
by an Options Paper in December 2014, and finally, the Final Report
released 7 May 2015. Further details of the review, prior papers
and the Final Report can be accessed
The final report makes a total of 23 recommendations, ranging
from minor changes to terminology, through to extending the subject
matter that can be protected via the designs regime, and many of
the recommendations include several actions. A selection of some of
the more interesting proposals are summarized below.
Harmonisation and Term of Registration
Recommendation 2 proposes that Australia investigate joining the
Hague Agreement and work actively through the Designs Law Treaty
process to promote harmonisation of filing requirements. However,
in recommendation 3 ACIP indicates that extension of the term of
registration from the current 10 years is only recommended if a
decision is made to join the Hague Agreement, at which point it
would be increased to 15 years.
Compulsory examination within 5 years and post certification
Recommendation 6 proposes that requesting examination be
compulsory before the first renewal deadline at 5 years, so as to
reduce the number of unexamined applications cluttering the
register and causing uncertainty. If this proposal is accepted it
is also recommended that a formal system of opposition be
introduced following successful examination.
Multiple design applications
Recommendation 8 supports development of the eligibility
criteria of designs for inclusion in a multiple design application
for consistency with relevant treaties and harmonisation, and the
application of reduced fees for each additional design included in
a multiple design application.
Amendment of the Statement of Newness and Distinctiveness up to
the point of certification after examination
Presently these statements cannot be amended after registration,
which can be problematic given the most relevant prior art often
comes to light until during examination. However, this proposal as
set out in recommendation 11 is quite limited, in that it specifies
that the amendment must not be deemed to broaden the scope of the
Grace period and prior user defence
Recommendation 12 proposes introduction of a six month grace
period together with a prior user defence, but also suggests that
applicants relying on this grace period be required to file a
declaration to that effect.
Protection of parts of products
While recommendation 13 recommends retaining the current
requirement that protection relates to the visual appearance of a
whole product, which may be part of a complex product, it suggests
this could be revisited when investigating harmonisation
opportunities. It suggests that provided significant advantages can
be shown to Australian applicants, without other adverse
consequences, then protection of partial products would be
Non physical or virtual designs
Recommendation 14 supports reconsideration of the treatment of
these designs, by, for example, allowing consideration of the
product in its active state and not just its resting state.
In recommendation 16, ACIP supports introduction of border
protection measures to allow for seizure by Customs of alleged
design infringements, but only those which are identical
to certified designs.
Spare parts repair defence
Recommendation 20 supports retention of the current repair
The report is now with the Australian government, and we await
their response to find out whether some or all of these
recommendations are likely to be implemented, and if so, when.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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