The Australian Government recently responded to the series of recommendations for designs law reform made by the Advisory Council on Intellectual Property (ACIP) in its final report of March 2015.
The ACIP Review of the Designs System1 (ACIP report) was first initiated in 2013 and, after 3 years of ACIP review, the government has reached the conclusion that most issues need further investigation.
The Productivity Commission is also currently looking at the designs regime as part of their review of the Australian Intellectual Property Arrangements.2 However, it does not appear that these two parties are yet working collaboratively.
What is likely to change sooner rather than later?
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. However, it is currently unclear what the terminology will be.
An applicant can currently opt for either registration of their design or simply publication. However, use of the publication regime is minimal. The government’s response states that amendments to remove the option of the publication regime are to be included in a forthcoming Intellectual Property Laws Amendment Bill.
Grace period for renewal payment
The Intellectual Property Laws Amendment 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 not yet known.
What could change sooner if the government was proactive?
The status of the Intellectual Property Laws Amendment Bill is not clear. It would be beneficial to include the following recommendations in the Bill.
Prior art base
The government has accepted the recommendation that the prior art base against which newness and distinctiveness is considered be expanded to include designs for products other than the product which is the subject of the registered design.
A grace period for disclosure by the design applicant is to be introduced together with a prior user defence. This will mean that a design owner’s own disclosure will be able to be excluded from the prior art base provided that an Australian design application is filed within the grace period following the disclosure. However, the government has stated that the length of a grace period, and any requirement for an applicant to declare any disclosures at the time of filing, will be determined at a later stage following further consultations.
Recommendation 18 in the ACIP report listed a number of legislation amendments to address specific anomalies identified by stakeholders. The government has accepted these recommendations:3
- that rules regarding the identity of Convention applicants are consistent with rules relating to entitlement to designs;
- that international Convention applicants are not disadvantaged in cases where formal requirements differ between jurisdictions, by expanding the rules relating to priority claiming;
- that 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.
Fee reduction for multiple designs
A reduction in official fees for each additional design added to an application was raised with IP Australia as part of their fee review consultation.4 However, the fee changes scheduled to apply from 28 October 2016 do not include any reduction. The current legislation is already framed to allow for this fee reduction and therefore it is simply a matter of implementation by IP Australia.
What is going to require further consultation?
Australian designs are typically published within a week or two of registration. Registration must be requested within 6 months of the priority date. ACIP recommended automatic publication of designs at 6 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. As outlined in our earlier article,5 by linking publication to the filing date as opposed to the priority date, it means that applicants who file a priority application in a convention country can defer publication by 12 months, whereas publication of a priority application filed in Australia can only be deferred for 6 months. IP Australia will consult further with stakeholders in this regard.
Virtual and non-physical designs
Currently, IP Australia considers a design only in a resting state (eg, unpowered). However, ACIP noted that the current legislation does not require visual features to be observed only in the resting state and therefore recommended that the treatment of virtual and non-physical designs should be reconsidered. 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. It is understood that the Productivity Commission is also considering this topic in their review.
Amendment of statement of newness and distinctiveness
The government wishes to undertake further consultation regarding the recommendation that a “Statement of Newness and Distinctiveness” should be able to be amended during the course of substantive examination. Currently, a Statement of Newness and Distinctiveness cannot be amended after registration and therefore cannot be amended when new prior art is identified in the course of examination.
What is reliant on Australia joining the Hague Agreement?
IP Australia has agreed to investigate the implications of Australia joining the Hague Agreement Concerning the International Registration of Industrial Designs6 (the Hague Agreement), and continue to monitor usage of the Hague System by our major trading partners. The government has tied a number of potential changes to joining the Hague Agreement.
Term of protection
The Hague Agreement includes an obligation to provide a maximum term of protection that is no less than 15 years.
ACIP recommended requiring a request for examination of a design be filed by the first renewal deadline (5 years) if the term of protection was extended to 15 years.
If compulsory examination at 5 years were to be introduced, ACIP recommended the introduction of a system of opposition following certification.
What won’t change any time soon?
The government notes the potential benefit of aligning Australia’s design system with those of key trading partners for Australian applicants seeking international protection. However, as this would be a fundamental change to the current designs system, they believe that extending protection to partial products should not be undertaken without detailed analysis of the costs and benefits. The Productivity Commission is also considering this issue in their review.
The government rejected the ACIP recommendation of introducing border protection measures that align with the Trade Marks Act 1995 (Cth) and the Copyright Act 1968 (Cth). This rejection was based on the practical difficulties for the Australian Border Force to implement.
What should we do?
For many of the recommendations, it will be a matter of “wait and see”. However, there will be opportunities for stakeholders to contribute to consultations and be actively involved, for example:
- The Productivity Commission’s review of Intellectual Property Arrangements — an inquiry report was handed to the Australian Government in September 2016.
- IP Australia’s future fee reviews.
- Intellectual Property Laws Amendment Bill — public consultation on an exposure draft (timing unknown).
This article was first published in LexisNexis’ Australian Intellectual Property Law Bulletin, vol 29, no 8, 2016 and is republished with permission.