The Australian Government are progressing a programme of reforms to ensure the Australian design rights system is fit for purpose and to support their economy now and into the future. As part of this work, the Designs Amendment Bill 2020 was introduced into the Senate on 2 December 2020 and is currently before Parliament for consideration.
If passed, the Bill will introduce several fundamental changes. These include:
- the introduction of a 12-month grace period
- the introduction of infringement exemption for prior use
- allowing exclusive licensees to take infringement action
- default request for design registration six months after priority date.
As mentioned in our previous article, IP Australia seeking public feedback on draft legislation to amend Designs Act, IP Australia previously sought public feedback on draft legislation for amending the Designs Act. The purpose of the Bill is to make improvements in clarity and simplicity in design systems and to also bring more flexibility for designers.
Prompted by the Advisory Council on Intellectual Property Response (ACIP), the Bill looks to serve a clear need for increased harmonisation with international practices and treaties, improve design protection and clarify the law for both owners and third parties.
Grace period and infringement exemption for prior use
The current Designs Act (section 17) and Regulations (regulation 2.01) allows for a six-month grace period for registration of a design to be sought after its disclosure. However, this is only available under special and limited circumstances.
With the potential introduction of a 12-month grace period, Australia will fall in line with many other jurisdictions, such as Europe, the United States and Japan, which already have a 12-month grace period. This eliminates any issues with designers from these jurisdictions who rely on the grace period, since obtaining protection in Australia will now have the same provisions regarding pre-filing disclosures.
Also, third parties who use a design after its disclosure and before the priority date of its registered design (i.e., during the 12-month grace period) will be exempt from infringement even after the design has been registered. This serves to protect third parties since they cannot foresee whether a disclosed design will be protected later.
What does this mean?
Pre-filing disclosures being disregarded is a great prospect for designers and these potential changes give third parties more certainty and clarity on their liabilities regarding infringement when using publicly disclosed designs.
Regardless, our recommended filing strategies remain unchanged despite these proposed changes and the 12-month grace period should be treated as a fallback for accidental disclosures. This is because any pre-filing disclosure opens the door for third parties to use the design without the fear of infringement.
Exclusive licensee rights for infringement action
The Bill allows exclusive licensees of a registered design to take infringement action against third parties. This brings more consistency with exclusive licensees of patents, trademarks and plant breeder’s rights who have the right to bring infringement proceedings under certain conditions.
Default request for design registration
In addition to the changes above, the Bill also permits the applicant to request registration of a design when filing a design application or within six months from the priority date. If registration is not requested within the six month period, design registration is automatically requested.
There are further proposed changes in addition to those mentioned above and they can be viewed in full here.
Please contact one of our patent experts if you have any questions, or would like to discuss this, or any other matter further.