Following on from our article of 14 May 2020, Australian Designs – Changes on the Way, we advise that the Australian Designs Exposure Draft Bill, Regulations, 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.
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.
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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