Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020
The designs system in Australia, regulated by the Designs Act 2003, protects the visual features of a product and a registered design can include the shape, configuration, pattern and ornamentation which, when applied to a product, give it a unique appearance.
In recent years, a variety of concerns were raised by designers, consumers and IP specialists about the effectiveness of the current designs system in Australia and whether it was meeting its original policy objectives. Since the implementation of the Designs Act 2003 in 2004, the system has not undergone a comprehensive review to assess whether it is effective and appropriate for Australia.
In light of the growing concerns, IP Australia conducted a recent review of the current Designs legislation. As a result of their review, they proposed amendments to the Designs Act 2003. The release of the draft legislation follows a consultation on recommendations accepted by the Government from the former Advisory Council on Intellectual Property’s (ACIP) Review of the Designs System.
Before cementing the proposed changes, IP Australia has requested public opinion on their exposure drafts.
The draft documents are:
- Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020
- Designs Amendment (Advisory Council on Intellectual Property Response) Regulations 2020 (collectively the ‘draft legislation’)
- Draft Explanatory Memorandum
- Draft Explanatory Statement (collectively the ‘explanatory material’).
In this particular round of consultation, IP Australia is only seeking feedback on potential unintended consequences of the legislation or issues with the drafting, rather than feedback on the policy that underpins the amendments (as this has already been agreed to by the Government).
IP Australia is also seeking feedback and comments on eleven specific questions which they have highlighted in the draft Explanatory Memorandum. The questions are located on pages 11, 12, 13, 14, 16, 18, 19 and 23.
Briefly, IP Australia has proposed the following major changes in the draft legislation:
- The introduction of a 12-month grace period to help protect against loss of rights through inadvertent disclosures made prior to filing
- Expansion of the existing limited prior use defence to protect third parties who initiated preparations to make a design prior to a third party applying to register the design
- Simplification of the design registration process by the removal of the publication option and instead implementing automatic registration six months after filing
- The alignment of design rights with the other IP Rights by giving exclusive licensees the legal standing to sue for infringement
- Various other technical improvements to several other sections of the Designs Act.
IP Australia’s aim with the proposed changes is to deliver early benefits to designers together with a user friendly and more transparent designs system. In addition to the legislative amendments, IP Australia is working on a new online system which is aimed at providing improved access to information on their website together with changes to allow for a smoother online application process.
IP Australia’s call for submissions opened on 23 Jul 2020 and will close on 28 August 2020. Submissions can be made online here.