The Australian Government have continued to progress a programme of reforms to the Australian design rights system. When the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 commences, it will introduce several changes to the current Designs Act 2003. These seek to increase harmonisation with other jurisdictions and clarify the law for both owners and third parties.
When do the changes come into effect?
The majority of the changes will commence on 10 March 2022. Some minor technical corrections and improvements have already come into force on 11 September 2021.
New 12-month grace period and infringement exemption for prior use
The introduction of a grace period will allow a design application to be validly filed if the design has been disclosed in the 12 months prior to filing for protection. For comparison, the current Designs Act 2003 allows for a six-month grace period, but only under special and limited circumstances.
This change brings Australia in line with many other jurisdictions, including Europe, the United States and Japan. It also brings the registered design grace period in line with that available for Australian patent applications, which also have a 12-month grace period.
The 12-month grace period will provide a useful fallback option for accidental disclosures. However, we do not recommend relying on the grace period and still recommend that a design application is filed before a design is disclosed. This is because the disclosure may affect the validity of a design application in other jurisdictions that don’t provide a grace period, such as New Zealand.
In addition, third parties who use a design after its disclosure but before a design application is filed will be exempt from infringement even after the design has been registered. The new infringement exemption seeks to strike a balance between the rights of designers and third parties, who may not be aware that the designer intends to file a design application during the grace period.
Streamlining of the application and registration process
After a design application is filed, the details of its appearance are kept confidential until it is registered. Currently, registration has to be requested within six months of filing or the application will lapse. The current system also allows an applicant to request publication without registration, but this is rarely used.
This change introduces automatic registration of a design application six months after it is filed, and will reduce the number of deadlines the applicant is required to meet. It will also no longer be possible for an application to be published without being registered. Instead, it will be necessary to withdraw an application within six months of filing to prevent the design being registered and published.
This change does not affect the two-stage process for securing registered design protection, where certification must be requested following registration to enforce a registered design.
Relief from infringement before registration
The current ‘innocent infringer’ defence will be extended to include infringement occurring between the filing date and the date of registration. The ‘innocent infringer’ defence may be used by third parties if they can prove they had no reasonable way to know that an application for design registration existed.
This change addresses an anomaly where the ‘innocent infringer’ defence could only be used in respect of registered designs, even though a third party could not have a found an application that was filed but not yet registered/published in the Designs Register.
Right of exclusive licensee to bring infringement proceedings
Currently, only the registered owner of a design can bring infringement proceedings. This change will give exclusive licensees the right to bring infringement actions under the Designs Act. This increases the consistency with other intellectual property (IP) rights such as patents, trade marks, and plant breeder’s rights where exclusive licensees already have the right to bring infringement proceedings.
This will be a welcome change for exclusive licensees, who will no longer need to rely on the registered design owner to take an infringement action through the courts.
The Designs Amendment Act 2021 also makes some minor technical changes and corrections to the Designs Act, and streamlines the process for updating formal requirements for design applications.
The current formal requirements set out in the Designs Regulations 2004 are based on a paper filing system and do not reflect that the majority of applications are now filed electronically.
It is likely that a draft determination specifying formal requirements for design applications will be published before the end of 2021. Keep an eye on our website for any updates.
Please contact one of our experts if you have any questions or would like advice about design applications or any other IP matters.