It was back in 2012 that Australia’s Advisory Council on Intellectual Property (ACIP) was first tasked with conducting the Review of the Designs Systemi. In 2013 ACIP published an issues paper and in 2014 an options paper. Consultation with stakeholders was held throughout 2014 and ACIP released its Final report in May 2015. A year later the Australian Government has responded to the series of recommendations for reform made by ACIP.
In both the ACIP Final report and the Government’s response there was an overarching recommendation to move in a direction of International Harmonisation. However, the majority of accepted recommendations are subject to further investigations, consultations or provisos and it is therefore likely that any substantive changes towards harmonisation are still a long way from implementation.
What accepted recommendations move in the direction of harmonisation?
Pleasingly, a grace period for disclosure by the design applicant is to be introduced together with a prior user defence. This moves Australia towards harmonisation with the United States and the European Union, who each provide a grace period of 12 months. However, the Government has stated that the length of a grace period and a requirement for an applicant to declare any disclosures at the time of filing will be determined at a later stage following further consultations.
What harmonisation recommendations are slated for further consultation or review?
Fee reduction for multiple designs
A number of the recommendations are currently being considered as part of separate investigations by IP Australia and/or the Australian Productivity Commission. It was understood that the Government was considering a reduction in official fees for each additional design added to an application in the context of IP Australia’s recent fee review. However, the fee changes scheduled to apply from 28 October 2016ii do not include any reduction. A number of other countries offer a reduction for more than one design, such as the European Union and the United Kingdom.
During ACIP consultations, stakeholders raised the subject of introducing a form of delayed publication, which would move Australia into closer alignment with the European Union, the United States and a number of other key jurisdictions. ACIP recommended automatic publication at six months after the filing date, with the possibility to request publication earlier if desired, and with an amendment to the innocent infringer defence. The Government believes that further consultation is required before accepting this recommendation, as there may be unintended consequences for particular applicants. IP Australia will consult further with stakeholders in this regard.
Virtual and non-physical designs
ACIP recommended that the treatment of virtual and non-physical designs should be reconsidered, for example by allowing consideration of a product in its active state, not just its resting state, when considering validity. The Government accepts this recommendation and IP Australia will continue to assess whether further considerations for the treatment of virtual or non-physical designs would benefit Australian interests. However, this issue is also being considered in the Productivity Commission enquiry, and it’s likely to be some time before we move towards harmonisation with key jurisdictions in this regard.
What recommendations are contingent on Australia joining the Hague Agreementiii?
IP Australia has been tasked with investigating the implications of Australia joining the Hague Agreement, and to continue monitoring usage of the Hague system by our major trading partners. Unfortunately both ACIP and the Government have tied a number of recommendations that move towards harmonisation to the decision of whether or not Australia joins the Hague Agreement.
Term and multiple design criteria
If Australia were to join the Hague Agreement it would be obliged to provide a maximum term of protection that was no less than 15 years. However, there is no recommendation to extend protection before joining. Further, whilst the Government is looking into a reduction in fees for multiple design applications, as discussed above, they are tying the development of the eligibility of designs for inclusion in a multiple design application to the investigations into the implications of Australia joining the Hague Agreement.
Examination and opposition
There are a number of other recommendations that are tied to the Hague Agreement investigations, although on the face of them they did not appear to bring Australia closer to International harmonisation. For example ACIP recommended requiring request for examination of a design by the first renewal deadline (five years). Additionally, if this recommendation for examination was implemented ACIP also recommended the introduction of a system of opposition following certification.
What recommendations keep Australia away from International Harmonisation?
Whilst the Government notes the potential benefit of aligning Australia’s design system with those of key trading partners for Australian applicants seeking international protection, they believe that extending protection to partial products should not be undertaken without detailed analysis of the costs and benefits. IP Australia will continue to assess whether allowing partial product registrations would enhance harmonisation of application requirements in a way that would substantially benefit Australian interests.
ACIP recommended the Government consider introducing border protection measures that align with the Trade Marks and Copyright Acts. The Government has rejected this recommendation.
What administrative improvements is the Government recommending?
Whilst the government appears unwilling to make any substantive changes, there will be a number of administrative recommendations accepted. The Government accepts the recommendation to change the terminology for registered but uncertified designs to make it clear that the design does not, until certification, confer enforceable rights. It is currently unclear what the terminology will be.
Publication regime and grace period for renewal payment
ACIP recommended removing the option of the publication regime, and the Government’s response states that amendments to implement this recommendation are to be included in a forthcoming Intellectual Property Laws Amendment Bill. This Bill will also include the introduction of a grace period for the payment of renewals, aligning with other IP rights. Public consultation on an exposure draft of the Bill will occur before the Bill is introduced to Parliament. The timing of the exposure draft is unknown.
What other improvements are the government considering?
Amendment of statement of newness and distinctiveness
The Government has accepted in principle that a statement of newness and distinctiveness should be able to be amended during the course of substantive examination. The Government wishes to undertake further consultation before implementing this change, to ensure there are no unintended consequences.
Prior art base
ACIP recommended that the prior art base against which newness and distinctiveness is considered be expanded to include designs for products other than the product subject of the registered design. This recommendation has been accepted.
A number of other recommendations were accepted on the proviso that Australia will continue to comply with relevant international treaties and that the changes would not result in an unintended advantage to convention applicants over non-convention applicants. These are summarised below.
- that rules regarding the identity of Convention applicants are considered with rules relating to entitlement to designs;
- the international Convention applicants are not disadvantaged in cases where formal requirements differ between jurisdictions, by expanding the rules relating to priority claiming;
- Courts have the power, similar to that available under the Patents Act 1990 to refuse to revoke a design registration on the basis of lack of entitlement of the named applicant in appropriate circumstances;
- design registrations are revocable on the basis of a lack of entitlement at the time of the revocation proceeding (rather than at the time of registration);
- the ground of revocation on the basis of fraud, false suggestion or misrepresentation extends to fraud, for example, during certification (not just registration);
- the opportunity to amend is broadened to allow for amendments other than to overcome a ground of revocation; and
- exclusive licensees have the right to bring proceedings for infringement.
So, how is Australia moving towards International harmonisation in the short term?
The introduction of a grace period appears to be the most substantive change to be implemented that provides advantage to applicants and moves Australia in the right direction towards harmonisation. If further consultation and investigation is positive then a reduction in fees for multiple design applications and a delay in publication look promising. There is also the possibility that IP Australia could change its examination practice, which does not require legislation amendment, to give consideration of a product in its active state, not just its resting state, when considering validity. Many of the other harmonisation options appear to be tied to Australia’s consideration of joining the Hague Agreement.