The coming age of grace (period) for Designs


Proposed changes to the Australian Designs Act 2003, introducing a 12-month grace period

The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 was first introduced to the Senate on 2 December 2020, and to the House of Representatives on 4 February 2021. This Bill represents the actualisation of proposed changes intended to bring improvements to Australia’s Registered Designs System through proposed changes to the Australian Designs Act 2003.

One of the more noteworthy amendments of the Bill is to introduce a 12-month grace period, which would bring Australia’s Registered Design System into closer harmony with counterparts such as the UK, EU, Japan and the US. Other jurisdictions such as Taiwan, South Korea, and South Africa currently provide a 6-month grace period.

Designs in Australia must be ‘new and distinctive’ at the filing date in order to be certifiable (and thus enforceable against infringers). This requirement is measured against other publicised designs anywhere in the world, and documentary disclosure is not jurisdictionally restricted to Australia. Therefore, if you intend to register a design, you must register it before it is disclosed publicly with, for example, any advertisements or sales, anywhere in the world.

Patents in Australia, and in some other jurisdictions, are afforded a 12-month grace period by which an applicant can file a patent application after self-disclosure. This has proven to be a saving grace for applicants who inadvertently, or unwittingly, publicise their inventions prior to filing. 

Designs in Australia do not currently enjoy a grace period and consequently many uninformed applicants have fallen into the trap of accidental self-disclosure. Inventors who utilise the grace period for patents are also often taken by surprise when they realise that they are able to submit a patent application for their invention but not for the design of the associated product. For these reasons, one can appreciate the importance of discussing your ideas with an IP professional as soon as possible.

If the Bill is passed and a grace period is introduced, fewer Australian design rights will be unintentionally forfeited. This would be great news for Australian applicants, designers, and companies who have publicly disclosed their products prior to the filing date.

Please contact us if you would like further details on The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 or more information on the proposed Designs grace period.

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