However, concerns had been raised shortly after its commencement about a lack of flexibility afforded to designers during the early stages of getting registered design protection, and in particular the lack of any ‘grace period’ which is a feature of the designs systems of many other countries throughout the world. Also, a number of anomalies had been identified such as limits on the ability of an exclusive licensee to initiate legal proceedings for design infringement that do not exist in the Australian patent and trade mark law.
After a lengthy review and consultation period dating back to 2012 reforms to Australia’s Registered Designs system were passed into law on 30 August 2021 that are intended to address the concerns raised. The reforms are contained in the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Amendment Act).
Schedule 1 provides for the introduction of a 12 month ‘grace period’ that enables a design application to be validly filed up to 12 months after public self-disclosure or use of the design.
The ‘grace period’ for Registered Designs (and other reforms discussed below) came into effect on 10 March 2022. The grace period only excludes from the prior art base designs that have been published or used on or after 10 March 2022. The grace period does not apply retrospectively to designs published or used before this date.
The new ‘grace period’ aligns the Australian Designs system with other countries and regions that offer a 12 month grace period, such as the United States of America and Europe. It also aligns with the Australian Patent system, which offers a 12 month ‘grace period’.
The primary purpose of the ‘grace period’ is to protect designers from losing their rights because of inadvertent disclosure.
The Australian grace period does not cover prior publication by way of a registered design published by a foreign patent office. This is intended to prevent Applicants from ‘abusing’ the grace period (which is 12 months) in circumstances where they ought to have filed for registered design protection in Australia within the 6-month Paris Convention priority period. Japan’s grace period for designs also does not cover prior publication by a foreign patent office. In contrast, the grace periods of United States and the European Community Design system do cover prior publication by a foreign patent office.
Apart from the new grace period, it is worth noting that Australia has a relative novelty test for prior use of a design whereas absolute novelty applies for prior publication. Section 15 of the Designs Act specifies that only prior use in Australia forms part of the ‘prior art base’ for assessing novelty.
Because the ‘grace period’ may be used strategically by designers to allow them to test the market before filing for a registered design this could leave competitors exposed who might proceed on the assumption that a design for a product has not been registered.
Schedule 2 introduced a prior use defence to infringement to deal with this. The defence provides an exemption to infringement for acts that commenced before the priority date of the registered design or where definite steps to do such acts occurred before the priority date that would otherwise infringe the design.
The prior use defence will be available even if the infringer derived the design from information made publicly available by the registered design owner. However, the defence will not apply if the design was derived from confidential information and without the owner's consent.
The Designs Act allows applicants to request registration or publication at the first opportunity or to defer publication of their design in order to keep the design confidential until they are ready to launch in the market. However, if registration or publication is not requested within six months from the priority date of the design then it will lapse.
To avoid the possibility of applications lapsing through failure to request registration or publication Schedule 3 provides that registration will be deemed to have been requested automatically, if not in fact requested, six months from the priority date.
Accordingly, applicants should be aware that once a design application is filed in Australia and registration and publication is not requested in order to defer publication, then registration and publication will occur automatically about six months after the priority date unless the design application is withdrawn sooner.
This reform affords applicants and their attorneys greater comfort in choosing to defer publication and registration.
Schedule 4 amends the innocent infringer defence in subsection 75(2) of the Designs Act. The previous defence only extended to infringing acts occurring after registration, meaning that acts occurring after filing and before registration that would be considered an infringement were not afforded the defence.
The amendments correct this anomaly by providing courts with a discretion to decline to make an award of pecuniary relief in relation to infringement occurring after the filing date of a registered design and before registration and publication.
The rationale is to protect an innocent infringer from infringement proceedings who could not at the time have been aware of the existence of the design application because it was not published and who, in fact, was not aware.
There is, however, an onus on the infringer to show they had no knowledge of the design or any reasonable way to find out.
As a practical matter, applicants should mark products or packaging with design application particulars at the earliest opportunity to reduce the potential for innocent infringement.
This reform provides exclusive licensees with the legal standing to take infringement action through the courts without needing to rely on the registered design owner. Prior to this reform, only a registered owner of a design had standing to commence infringement action.
Other reforms in the remaining Schedules 6 and 7 are technical in nature and relates to the smooth administration of the Designs Registration system. For example, Schedule 6 enables the Registrar of Designs to update formality requirements for design applications more quickly by issuing written determinations without the need to amend the regulations.
- Consider joining FICPI’s CET 2 Study & Work Committee on Design Protection. Its main objective is to promote the discussion of the trending topics concerning industrial designs in different parts of the world, either at national or international level: https://ficpi.org/cetcommissions/cet-2-designs
- Network with IP attorneys from across the world, attend thought-provoking sessions and briefings, and enjoy the convivial surroundings of the French Riviera at FICPI’s 2022 World Congress in Cannes in September 2022: https://ficpi.org/events/ficpi-world-congress-2022
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