The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) received Royal Assent on 10 September 2021, and introduces key changes to designs law in Australia. In particular, a 12 month “grace period” will be introduced, which protects applicants who use or publish their design before filing. The majority of the amendments commence on 10 March 2022, and we outline in detail below the key changes and what you need to know.
12 month grace period
Key change: the introduction of a 12 month grace period brings the Australian designs system in line with the patents system. The change means that Australian design applicants can file their design application within 12 months of use or publication, without it affecting the “new and distinctive” requirement.
While a grace period is common practice internationally and already applies to patents in Australia, the Australian Designs Act has trailed behind. It is a welcome change for applicants, many of whom may have assumed the grace period existed and unknowingly jeopardised their application through use or publication.
What this means: commencing on 10 March 2022, the grace period will allow designers to test their design in the market, before committing to design protection over other forms of protections such as copyright, and before products are industrially applied. Importantly for foreign applicants, while the grace period applies from the priority date, there are certain exemptions, such as publication of the design by overseas foreign designs offices so claiming priority will be important.
Infringement exemption – prior use
Key change: a new infringement exemption will be introduced to protect third parties from infringement if they use a design after disclosure, but before an application for that design has been filed. This comes off the back of the newly introduced grace period, in an effort to balance the rights of designers and third parties.
What this means: a designer may disclose their design during the grace period but a third party might not be aware that the designer intends to file an application to register the design. If the third party starts to use, make, import or sell the product before the filing date, they will be exempt from registered design infringement during that period.
Innocent infringement defence
Key change: an innocent infringement defence is currently available under the Design Act, where a third party was unaware, or could not reasonably be aware a design is registered. This defence will be expanded to include the period of time between the design filing date and registration, where the design is not published on the register and available for the public to search.
What this means: a successful application of this defence can result in a refusal to award damages, a reduction in the damages awarded, or a refusal to award for an account of profits, in respect of an infringement occurring before the date the design was registered.
Key change: an exclusive licensee who has licensed all rights in Australia to a design, will now have standing to commence infringement proceedings and enforce their rights. However, the licensee must make the registered owner of the design a defendant in the proceedings, unless the registered owner is a joint plaintiff.
What this means: as the one who is exploiting and using the design, this brings licensee rights under the Designs Act in line with that of trade marks and patents.
Removal of publication option
Key change: from 10 March 2022, we will also see the removal of less commonly used option to publish a design without registration (often used to place the design into prior art).
What this means: moving forward, if registration is not requested at the time of filing, the design application will automatically be registered after six months, unless the applicant expressly withdraws the application. A design application will also be kept confidential until registration occurs.
We will also see changes to:
- Formal requirements: the process for updating formal requirements will be improved so the Registrar can easily change what must be included in an application and how drawings are presented. This is to bring the rules up to speed with new technologies, as they continue to develop for designs.
- Standard of the informed user: this has now been amended from an “informed user” to “familiar person”, when considering whether designs are substantially similar in overall impression. The change will remove the necessity to be a “user” of the design, and is expected to reduce expert witness costs in infringement matters.
- Revocation of registration: this amendment clarifies the grounds for revocation, expressly including acts of fraud, false suggestion or misrepresentation, and that they apply to both registration and examination stage of the design.
- Renewal of registration status: this amendment clarifies that during the six month renewal period available for payment, the registration will not cease.
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.