The introduction of a 12-month grace period for designs in Australia will make it easier to coordinate the filing of Australian design applications into a broader international filing strategy, where there has been a pre-filing disclosure.
A Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was passed by Parliament on 30 August 2021, which among other things, introduces the 12-month grace period for filing a design application in Australia. This grace period will have effect in Australia, but not other jurisdictions, and so cannot remedy pre-filing disclosure for an applicant in another jurisdiction without similar provisions.
A design application in Australia will need to be filed within 12 months of disclosure to receive the benefit of the grace period, and the disclosure will need to have been made by:
- The designer(s);
- The owner(s) of the design where this is someone other than the designer;
- A party authorised by the designer or design owner; or
- A party who obtained the design from the designer or design owner without their permission.
Publication of a design by any official designs office is not eligible for the grace period.
The Australian design grace period will come into effect 6 months after the Bill receives Royal Assent. The time that it takes for a Bill to receive the Royal Assent is usually between 7 and 10 working days, so it will likely come into effect by mid-February 2022.
In order to balance the rights of design owners and third parties in light of the introduction of this grace period, the Bill also introduces an infringement exemption that protects third parties against infringing a registered design where they were using it before its priority date.
This applies to both independent creation, and in the case that the third party uses the design based on the disclosure made by the design owner before the priority date.
Accordingly, it remains preferable to file a design application in Australia before making any disclosure, or which claims priority under the Paris Convention, but the grace period will be available if required.
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