The current Australian designs system has been in operation since the commencement of the Designs Act 2003(“the Act”) in June 2004. Since its commencement, a variety of concerns have been raised about the effectiveness of the designs system in stimulating innovation and economic growth in Australia.
In 2012, the Advisory Council on Intellectual Property (“ACIP”) was tasked by the Australian Government to review the operation and effectiveness of the Act. ACIP’s Final Report has now been released and can be foundhere.
A key part of the Final Report has been a push towards increased harmonization with international practice in design protection, which is aimed at benefitting users and streamlining Government administration. ACIP has identified a number of areas in which the effectiveness of the Act could be enhanced and 23 recommendations have been put forward. Some of the keys recommendations include:
- Extending the maximum term of design protection from 10 years to 15 years only if a decision is made to join the Hague Agreement (recommendation 3);
- Introducing a 6 month novelty grace period (recommendation 12);
- Reconsidering the treatment of virtual or non-physical designs (such as graphical user interfaces), for example by allowing the product to be considered in an “active” state and not just in the resting state (recommendation 14);
- Renaming a registered design that has not been certified as an “uncertified design” to make clear that a registered design does not confer enforceable rights until post-registration certification (recommendation 4);
- Automatic publication of designs at 6 months after the filing date, with the option of requesting publication earlier, and still no formal option to delay publication. ACIP also recommends amending the innocent infringer defence provisions to suggest that damages for infringement be applied from the publication date. (recommendation 9);
- Removing the option of the publication regime from the designs process, which currently allow designs to be simply published without providing any enforceable legal rights (recommendation 5);
- Introducing a system of opposition following certification of a registered design (recommendation 7); and
- Introducing border protection measures to allow for seizure by Customs of alleged infringing products that are identical to certified designs (recommendation 16).
The Australian Government will now consider the Final Report and, if the recommendations are accepted, changes to the Act will be proposed.