The Designs Amendment Bill 2020 has passed through Parliament ushering in a wave of reform in Australia. Jennifer Wyndham-Wheeler looks at the changes and what they mean for you.
The Designs Amendment (Advisory Council on Intellectual Property Response) bill 2020 (‘the Designs Bill’) was passed by both houses of Federal Parliament on 30 August 2021, ushering in a wave of reform in Australia.
Initiated by a comprehensive review in 2019, the Designs Bill enacts the following changes as recommended by the Advisory Council on Intellectual Property and public consultation:
- A 12-month grace period. The grace period will protect designers against inadvertent self-disclosure (i.e., publication or use) prior to filing a registered design. This provides flexibility for designers starting out with new products who are unfamiliar with the design system. Designers will no longer lose the ability to register a design for a product that they have self-disclosed within the preceding year. Another benefit may be to allow designers to test products in the market before filing designs and make more informed and strategic design filing decisions.
- Infringement exemption for prior use. Third parties who start using a design before it is published on the designs register – i.e., during the grace period – are exempt from infringement. This change balances the rights of designers with third parties. Once a design is registered and published, then third parties are considered put on notice of those exclusive rights. Prior to that it seems unfair to punish third parties who have started using an identical or similar product to the design that they may very well have created independently. The third party is able to continue using, making, importing and selling products which are identical or similar to the design.
- Registration of designs and removal of the publication option. The registration process is now simplified and more streamlined. A request for registration of the design may be made at filing or within 6 months from filing. If a request for registration is not made within the 6-month time period, then the design will automatically proceed to registration. Once the design is registered, publication occurs within a few weeks. The option to publish the design without registering it has been removed. For overseas applicants filing design applications into Australia (i.e., up to six months after an original (Convention priority) filing), the six-month period will have already elapsed and the design will register and publish shortly after filing.
- Relief from infringement before registration. This reform is an extension of the current innocent infringer defence which prevents third parties infringing a design that they do not know is registered. The extension also applies the innocent infringer defence to the time period between filing and registration which as previously mentioned can be a time period of up to 6-months. This reform is consistent with the policy of balancing the rights of designers and third parties. Again, where a design is not published on the Register then the competitor could not have known about the existing exclusive rights.
- Formal requirements. Formal requirements are directed to rules regarding drawing requirements, the specification and information that may (or may not) be included in an application, such as scandalous material. Moving the formal requirements to a non-legislative instrument allows for greater flexibility in updating these requirements with changing technology.
- Changes to the ‘informed user’ standard. The legal standard of the ‘informed user’ is used to assess the validity (i.e., newness and distinctiveness) of registered designs and the infringement of registered designs. The primary change is that the ‘informed user’ no longer needs to be a user of the product.
Now that the Designs Bill has been passed, it will be provided to the Governor-General for Royal Assent (which typically occurs quickly). Once Royal Assent is provided, some changes including the legal standard will have immediate effect, and some changes, most notably the grace period, will commence 6 months after Royal Assent.
Of the changes to design law summarised above, the introduction of the grace period will have real tangible benefit for designers by providing flexibility for inadvertent self-disclosure. In the longer term, IP Australia intends to explore further reform measures of the design rights system to better support innovation in Australia.
How can we help
If you have any queries as to how these changes may affect your own situation, do not hesitate to get in touch with Jennifer Wyndham-Wheeler, or your usual Griffith Hack contact.