The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Act) received Royal Assent on 10 September 2021. As mentioned in our previous article, this update will bring improvements to Australia's Registered Designs System through proposed changes to the Australian Designs Act 2003.
The changes introduced by the Act are grouped into seven schedules and we have provided a summary below of the most noteworthy changes.
Schedule 1 - Introduction of a 12-month grace period
The Designs Act is to be somewhat aligned with the Patents Act through the introduction of a 12-month grace period. Under revisions to Section 17, certain disclosures that occur within the 12 month period, ending at the end of the day before the priority date of the subject design, are to be disregarded when assessing a design's newness and distinctiveness. Those disclosures include publication or use of the design by, or derived from, the registered owner (or the registered owner's predecessor in title).
Publications of designs by the Registrar of Designs or under a law of a foreign country relating to designs will not enjoy the benefit provided by the grace period. However, since the grace period is determined to be the 12 months prior to the claimed priority date instead of the Australian filing date, the grace period should, in many cases, enable registration of a design claiming priority to a foreign design application, which in itself relies on a grace period.
Notwithstanding that the introduction of a grace period substantially reduces the risk of a design being unregistrable due to inadvertent publication, our strong recommendation is that applicants should seek design protection in advance of intended public disclosure. Many other countries do not have a grace period, which may preclude protection in certain foreign countries if the design is published in advance of filing. Furthermore, within Australia, changes introduced by Schedule 2 of the Act provide for an infringement exemption of prior use, allowing a third party to copy a published design and potentially avoid infringement if they initiate use before the priority date of the subsequently filed design registration.
The grace period operates differently to the provision for patent matters and has a number of exemptions. We suggest that you have a discussion with a registered patent attorney before publication if a design application has not been filed. The grace period applies in relation to publications or use that occurs on or after the commencement of Schedule 1 due to be introduced on 10 March 2022.
Schedule 2 - Exemption of infringement for prior use
Schedule 2 of the Act introduces an exemption of infringement for prior use, which is particularly relevant with the introduction of the 12-month grace period. If a third party commenced use of the design before the priority date of a registered design, the prior use exemption protects the third party from infringing against the registered design. The infringement exemption not only applies where a third party independently develops an infringing design but also where the infringing design is derived from an authorised public disclosure of the registered design before its priority date.
Schedule 2 is intended to balance the rights of designers and third parties using the design (or a substantially similar design) before the application was filed. If a third party commences use of the design prior to the priority date of the registered design, they may continue to use, make, import, or sell the design after the design has been registered.
Schedule 2 is relevant to any registered design having a priority date on or after 10 March 2022.
Schedule 4 - Relief from infringement before registration
Schedule 4 corrects an anomaly of the current Act whereby relief for 'innocent infringers' is not available during the period between filing and publication of a design. Since Australian design applications are not published until registration, it was considered unreasonable that relief is not available within this period, particularly considering relief is potentially available after registration.
Schedule 4 applies to designs registered on or after 10 March 2022.
The remaining schedules of the Act introduce changes that are largely procedural or administrative:
- Schedule 3 - removes the option to publish a design without registration, and simplifies the process of requesting registration.
- Schedule 5 - allows exclusive licensees of design rights to take action against infringers without needing to rely on the design's owner.
- Schedule 6 - streamlines the process for changing formal requirements for design applications.
- Schedule 7 - makes minor technical changes to clarify some
matters in design legislation, and includes three parts:
- Part 1 - Standard of the informed user,
- Part 2 - Revocation of registration of design, and
- Part 3 - Renewal of registration of design.
- Schedule 7 Parts 1 and 2 have commenced from 11 September 2021, and Schedules 1-6 and Schedule 7 Part 3 are to commence on 10 March 2022. Further information on the schedules can be found here.
The reforms brought about by the Act are changes that will afford businesses and designers in Australia with greater flexibility in design registrations. This also brings Australia's Registered Design System into closer harmony with our major international partners.
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.