Australian Designs – Changes on the way


IP Australia has now released its proposals for implementing the recommendations of the Advisory Council on Intellectual Property’s (ACIP) to improve the Australian designs system.

For background, in 2012 ACIP was asked to investigate and improve the effectiveness of the designs system in stimulating innovation by Australian users and the impact the designs system has on economic growth. This review led to the release by ACIP of an Options Paper for public consultation on 3rd December 2014 and a Final Report in 2015.

After considering stakeholder submissions on the recommendations laid out in the Final Report, IP Australia is now proceeding with a number of proposals, the most notable being:

  1.   An automatic grace period of 12 months from the priority date with a prior use defence based on Section 119 of the Patents Act 1990.
  2.   Removal of the requirement to request registration of the design. Registration would now occur six months after the filing the application.
  3.   Removal of the rarely used option of only publishing a design and not registering it.
  4.   Revision of Section 19(4) of the Act to clarify the standard of the informed user consistent with the Multisteps approach.
  5.   Liability for infringement to be removed before Registration (consistent with other IP rights).

Left on the table at this present time are any changes to the protection of partial and virtual designs (e.g. GUI’s), and a formal publication/registration delay process.

IP Australia says that it will release an exposure draft of the proposed Bill and supporting regulations in the second half of 2020. After participating in the stakeholder submissions, Spruson & Ferguson welcome these improvements and look forward to them being passed into law.

A full copy of IP Australia’s response can be found here.

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