The Australian Government has responded to a series of recommendations for reform of Industrial Designs Law by the Advisory Council in Intellectual Property (ACIP). ACIP made 23 recommendations in its final report, many of which have been accepted by the Government. Some of the significant changes proposed by the Government are summarised below, together with matters that will be further reviewed and matters that were reviewed and will remain unchanged.
Validity and registrable designs
Expansive definition of the prior art base
ACIP identified uncertainty regarding whether or not the prior art base includes designs in relation to different products to the product in relation to which the design is registered. It is to be clarified that the prior art base for a registered design does include designs for other products.
Grace period and prior user defence
A grace period for disclosure by the design applicant is to be introduced. Simultaneously a prior user defence will be introduced. Details of the grace period will be determined through further consultation.
Virtual or non-physical designs
During examination current Designs Office practice is to only considers the product in its rest state (e.g. icons on an electronic display screen are disregarded). The Government agreed with ACIP’s recommendation to reconsider this practice.
ACIP’s view was that there is nothing in the legislation that requires the current practice by the Designs Office. It therefore appears open to the Designs Office to immediately change its examination practice. However, whether this occurs remains to be seen.
Revocation on the basis of lack of entitlement
Currently a design is liable to be revoked if the registered owner was not entitled to the design when it was first registered. This standard is proposed to be relaxed by shifting the date of inquiry to the date of revocation proceedings, and by providing the Court with the power to refuse to revoke a design on the ground of lack of entitlement.
Revocation for fraud, false suggestion or misrepresentation
The ground of revocation for fraud, false suggestion or misrepresentation will be extended to include conduct during substantive examination and certification of a design. The current provisions only apply to formalities examination and registration. This change therefore corrects an anomaly in the Designs Act.
Amendment of the statement of newness and distinctiveness
The Government accepted in principle that an owner of a registered design should be able to amend the statement of newness and distinctiveness in the course of substantive examination.
The function of the statement of newness and distinctiveness is to point out the features of the design to which particular regard is to be had when evaluating both infringement and validity. The change will give the owner of a design more options to distinguish prior art raised during examination. A proviso is that the amendment must not broaden the scope of the design, which adds a degree of complexity to the issue.
The Government considers that more consultation on this issue is required before implementing the change, to ensure there are no unintended consequences.
Licensees, renewal fees, Convention applications and terminology
A number of “anomalies” in the Australian Designs Act are proposed to be corrected and changes to terminology made, including the following.
Infringement proceedings by exclusive licensee
Provisions that allow an exclusive licensee to bring proceedings for infringement will be introduced.
Grace period to pay the renewal fee
A grace period in which to pay the renewal fee on a registered design will be introduced.
Criteria for Convention Applications to be improved
Anomalies in the provisions relating to Convention applications will be removed. These changes should avoid some of the current complexities that exist for applicants claiming priority from an overseas design application.
Addressing confusion surrounding when a design is enforceable
The terminology in the Designs Act will be changed, to clarify that a registered but uncertified design is not enforceable.
Further investigation and other activities
In addition to the proposed changes accepted by the Government, the Government also indicated a number of areas of continued investigation and development.
The Government will continue to encourage international harmonisation and streamlining of registered design systems across jurisdictions. Joining the Hague Agreement will be considered, and the Government intends to continue involvement in development of the Designs Law Treaty.
Maximum term of a registered design
Whether the maximum term of a registered design should be changed from the current 10 year term will be considered as part of the consideration of the Hague Agreement.
The Government will further consider the merits of introducing an opposition procedure before the Designs Office.
Reduction in fees for multiple designs
Currently the official fees for the second and subsequent designs included in an application are the same as if those designs were included in separate applications. The Government will consider reducing the fees payable for each additional design added to a multiple design application.
Currently designs are published on registration, which occurs promptly after filing in Australia. The Government has sought further consultation on ACIP’s recommendation to change to automatic publication six months after the filing date.
Features of Australian law to remain unchanged
The Government did not accept some ACIP’s recommendations and accepted other recommendations for no change. The effect is that the following current provisions will remain unchanged for now:
- No border controls in respect of alleged design infringement.
- Design protection is only available for whole products, not partial products.
- The current test for distinctiveness, which is used to evaluate both infringement and validity will remain.
- Certain repairs of products will continue to not infringe a registered design for the product.