On 3 December 2014, the Advisory Council on Intellectual Property (ACIP), which is an independent body appointed by the Government to advise on IP matters, released an Options Paper proposing different models for revising the Designs Act 2003.  The Options Paper follows an investigation by ACIP into the effectiveness of the Australian designs system, particularly in stimulating innovation and promoting economic growth in Australia.

A goal stated in the Explanatory Memorandum of the 2003 Designs Act legislation was to “provide a simple, cost-effective designs system that provides Australian designers with more effective rights”.  The Options Paper considers where the 2003 Act may have fallen short, and proposes changes to the Act to better reach this goal. Changes to this law in the future may provide important new opportunities for IP holders in Australia to protect and exploit registered designs to achieve their commercial goals.

In the Options Paper, ACIP proposes three alternative, broad approaches for revising the Designs Act 2003.  The approaches are summarised below.

Option 1 is to take a minimal approach, where the policy decisions embodied in the Designs Act 2003 are accepted and specific issues that have arisen regarding the Designs Act are addressed.  ACIP proposes, for example:

  • Addressing anomalies in the Designs Act.   Such anomolies include for example the fact that lack of entitlement at the time of registration is a ground for revocation of a design, but under the Raising the Bar Act of 2012 it is no longer a ground for revocation of a patent.  Addressing this anomoly strengthens the rights of owners of registered designs as it makes such rights easier to enforce.
  • Changing terminology in the Designs Act to make it clear that an uncertified design does not confer enforceable rights even if registered;
  • Removing the option of publication as an alternative to design registration.  The option of simply having designs published—and thus dedicated to the public domain—has not been widely used.  Removing this option would thus simplify the process of completing an application for a registered design.
  • Improving the application process and reducing fees for multiple design applications.   Currently, the 2003 Act provides no cost benefits for filing multiple design applications concurrently or for filing multiple designs in a single application.  The Options Paper stated “ACIP considers that substantial reductions in at least the filing fees for multiple applications could provide significant encouragement for increased use of the design registration system by Australian industry sectors, such as the clothing industry sector, that produce multiple designs each year that have significant potential commercial value that is not immediately realised.”
  • Addressing anomalies that have arisen in relation to copyright/design overlap.  This is an area of the law that has remained quite confusing for owners of copyrights and designs.  ACIP thus proposes attempting to further clarify some definitions, such as more clearly define what is included in a “work of artistic craftsmanship”, and more clearly define when a design is “embodied” in three dimensions.

Option 2 is to take a more thorough approach, where the issues of Option 1 are addressed and further changes are made to bring Australian law into line with that of major trading partners and international treaties, while having regard to providing a design registration system that encourages innovation by Australian designers.  The proposed further changes include:

  • Joining the Hague Agreement Concerning the International Deposit of Industrial Designs, which would result in the extension of the maximum term of protection from 10 years to 15 years, and most likely introduce a system of opposition following certification and require certification at the first renewal (5 years).
  • Introducing a grace period of six months together with a prior user defence.  The current Act includes no grace period for filing an application for a registered design after a public disclosure of the design.  Thus if a design is made publicly available before an application is filed, the design is effectively dedicated to the public domain in Australia.  Adding a grace period would thus provide owners of design rights with significantly more flexiblity.  It would also help align Australian law regarding registered designs with the law of the USA and Europe, which both allow grace periods for filing design applications after a public disclosure.
  • Automatically deferring publication to the point of registration (at six months) with the possibility to request publication earlier if desired.  Publication of a new design currently occurs just a few weeks after filing, which can impact business’s plans for new product roll-outs. Deferring publication for six months would allow businesses greater control over when they choose to make their new designs public.
  • Introducing border measures to allow for the seizure by Customs of alleged infringements – but only those which are identical to Registered Designs.
  • Amending treatment of virtual or non-physical designs in the Designs Act.  In particular this concerns whether graphical user interfaces on electronic devices such as smart phones should be protectable as registered designs.  The law in Australia is currently unclear in this area, and ACIP recommends that graphical user interfaces should be explicitly protectable as registered designs.

ACIP considers that Option 2 could assist Australian applicants to better utilise the international system, and it would likely also encourage more use of the Australian designs system by foreign companies.

Option 3 is to implement a wholesale revision of the role of designs in Australia’s IP law.  ACIP considers, for example, the following strategies and revisions:

  • Revising the need for unregistered design protection and the scope of design protection, particularly in the context of technological developments such as 3D scanning and printing.
  • Considering whether protection should be extended to partial designs and whether virtual or non-physical designs such as screen displays and icons should be treated as products.
  • Introducing unregistered anti-copying rights in designs, or full copyright protection for all artistic works regardless of ‘industrial application’.
  • Allowing designers to identify features they claim in a way that is much less tied to ‘industrial products’, for example, claims for partial products.
  • Making infringement less dependent on applying the design to the registered product.

ACIP states that they do not presently have evidence sufficient to suggest that wholesale change would be in the national interest. However, ACIP proposes that such a wholesale review would also involve gathering more detailed evidence on Australia’s industrial and economic strengths, and developing strategies for industry development in the field of design, as well as more information on the operation of systems, which do not exclude industrial design from the copyright system.

ACIP intends to report to the Government in March 2015.  The Options Paper and more details of the review can be found on ACIP website athttp://www.acip.gov.au/reviews/all-reviews/review-designs-system/.