Following on from our previous report on 30 September 2021, we remind you that following Royal Assent on 10 September 2021, the amendments within the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Act) go live on 10 March 2022.
The Act intends to provide more flexibility for designers during the early stages of obtaining registered design protection. It also introduces other simplifying and clarifying amendments to the Australian designs system. The amendments to the Australian Designs Act 2003 are divided into seven schedules, and the following is a brief summary of what you need to know.
Commencing 10 March 2022
Grace period – Schedule 1
A 12-month grace period to file a design application following publication or use by the registered owner (or their predecessor in title), has been introduced. In other words, self-publications made up to 12 months before the priority date of a design will be disregarded when deciding whether a design is new and distinctive. It should be noted that the new grace period provision will only apply to a publication or use that occurs after the commencement of this provision.
This is a significant change as it will protect designers from losing their ability to seek protection due to inadvertent disclosure of their design prior to seeking design protection.
Infringement exemption for prior use – Schedule 2
A new infringement exemption is being introduced for any person who has used or taken steps to use a design before the priority date of the design. This provision is modelled on a similar provision in the Patents Act and is in direct response to the introduction of the grace period. The exemption, therefore, deals with the uncertainty created by not knowing if a published design would be later registered using the new grace period.
Removal of option to publish only and requesting registration – Schedule 3
The option to publish only, rather than register and publish, a design disclosed in a design application has now been withdrawn. The publication option was primarily intended for defensive purposes because it places the published design on record and is therefore available for use in establishing grounds of revocation of a subsequently filed design or patent application. As the publish only option was not extensively used, it has now been removed. Applicants can still achieve publication through the registration of their design.
In addition, the steps to register a design have been streamlined, with a formal request for registration now deemed to occur automatically 6 months after the priority date. For Applicants, this removes the administrative burden of a deadline requiring action and effectively delays the registration of their design to after 6 months from the priority date. It is still possible, however, for the Applicant to file a request for registration before the end of the 6-month period to register earlier than normal.
Relief from infringement before registration – Schedule 4
As an extension of the “innocent infringer” defence, the Court will now have discretion to grant relief from infringement occurring after the filing of a design application but before its registration date. During this period, which may be up to nine months depending on Design Office backlogs, the design is not publicly available, so a person who uses the design at this time may not be aware of the pending design application.
As a result of this amendment, reduced or no monetary relief may be imposed upon this “innocent infringer” where it is shown that the defendant was not aware, and could not reasonably be expected to have been aware, that an application had been filed for the design.
Right of exclusive licensee to bring infringement proceedings – Schedule 5
Exclusive licensees will now have the legal standing to take infringement action through the Courts without needing to rely on the registered design owner, who may not be motivated to assist the exclusive licensee with an alleged infringer due to the associated costs or administrative burden.
This amendment ensures that exclusive licensees of registered designs are able to enforce the rights that they have paid for – and brings designs into alignment with patents, trade marks and plant breeders’ rights in Australia.
Formal requirements – Schedule 6
Amendments have been made to the formal requirements for a design application so as to align with the electronic based filing system. This simplifies the source of rules for Applicants and also allows the Registrar to update the rules for formalities requirements by written determination, and thus easily adapt to changing technology.
Renewal of registration of design – Schedule 7
This amendment clarifies that if the renewal of the design occurs after the five-year anniversary date and within the grace period for payment of the design, the design does not cease. This resolves uncertainty over the status of the design should this relatively common scenario occur.
Commenced on 11 September 2021
Standard of the informed user – Schedule 7
The Act abandons the “standard of the informed user” test and adopts “the standard of the familiar person” test in relation to assessing whether a design is substantially similar in overall impression to another design. This aligns with what has become the preferred approach in the Courts and is intended to increase certainty in litigation. It may potentially reduce expert witness costs, with the witness now needing to be familiar with the product, but not a user of the product or similar products.
Revocation of registration of design – Schedule 7
This amendment extends the existing provision that a Court may revoke a design registration that “was obtained by fraud, false suggestion or misrepresentation” to include where the certificate of examination was obtained by fraud, false suggestion or misrepresentation.
If you have any queries about the above changes and how they may affect you or if you need assistance with design strategy, protection or enforcement, please do not hesitate to get in touch with us.