IP Australia releases proposals to implement changes to the Designs system in Australia

What you need to know

• IP Australia has released its proposal for implementing some of the recommendations of the Advisory Council on Intellectual Property (ACIP) with a view to improving the designs regime in Australia. 
• The changes which will be made are intended to address findings that the Designs Act 2003 provides limited flexibility and clarity and limited scope of protection for designs.

What you need to do

• Watch out for the exposure draft of the legislation to implement the first phase of improvements to the design system after July 2020 and have your say about the proposed changes.

Response to Public Consultation

IP Australia has issued a response to the public consultation process into changes to the Designs Act and is now implementing the first phase of initiatives intended to deliver benefits to designers by way of a streamlined and clearer process. Broader and longer term reforms are planned for the future in the context of a more holistic review of the designs ecosystem as part of the Designs Review Project.

First Phase

For the first phase IP Australia has confirmed that it will make changes regarding the following:

1. Sub-section 19(4) of the Designs Act 2003 will be amended to clarify the standard of the informed user in order to enshrine the approach taken by the Federal Court in Multisteps Pty Ltd v Source Pty Ltd [2013] FCA 743 in the context of assessing whether a design is substantially similar to another design for the purposes of determining distinctiveness and infringement. Application of the Multisteps approach means that the standard of the informed user will not require the person to be a "user" of the product or similar products to which the design applies; rather the persons needs only to be familiar with the product or similar products (despite use of the wording "standard of the informed user" in the tag to sub-section 19(4)). This amendment will increase certainty in disputes and potentially reduce expert witness costs because a design expert will not be required to give evidence.
2. Liability for infringement before a design is registered will be removed.
3. There will be an automatic prior art grace period of 12 months from the priority date.  This amendment (which provides harmonization with jurisdictions such as the United States and Europe) will permit applicants to conduct product testing and protect against inadvertent disclosures.
4. A prior use infringement defence will be introduced. This amendment will protect third parties against infringement if they start using their own design before the priority date of the registered design.
5. There will be automatic registration of designs 6 months after the filing date (eliminating the requirement to request registration).
6. The publication only option (which was rarely used by applicants) at the registration stage will be removed.
7. Formal requirements for design applications contained in the Designs Regulations 2004 will be moved to a non – legislative instrument to provide greater flexibility.
8. There will be changes to requirements regarding the identity of convention applicants. This amendment will expand the rules relating to priority claims to remove the disadvantage to convention applicants where formal requirements differ between jurisdictions.
9. The Court will be allowed to refuse to revoke a design registration.
10. Revocation of a design registration will be allowed on the basis of fraud during certification.
11. An exclusive licensee will be permitted to commence infringement proceedings.
12. The renewal grace period will be aligned with other IP rights. This amendment will clarify that a registered design does not cease during the 6 month grace period for payment of renewal fees unless it is not renewed.