The Australian Design Act 2003 has been amended to include several provisions which are better aligned with the aim of providing a robust and relevant IP system for designers. The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Cth) implementing the recommendations of the Advisory Council on Intellectual Property has been passed. As the Act received Royal Assent on 10 September 2021, all changes will have taken effect by 10 March 2022.
Importantly, these reforms seek to improve the Designs Act 2003 while balancing the rights of designers with those of third parties in a competitive landscape.
12-month grace period
Perhaps the most notable reform is the introduction of a 12-month grace period. Australia now joins the US and Europe in allowing designers who have inadvertently published their design to file a design application within 12 months from the prior disclosure without the applicant’s prior publication invalidating the application.
This is important for designers who need to display their design to test the market or make presales of their product to establish an edge in the market. This protects designers who are unfamiliar with the registered designs system and are unaware of the validity requirements for a design registration.
Infringement exemption for prior use
Third parties who have used an identical or similar design before the filing date of a design application for a design will be exempt from infringement. Previously there was no such protection for those who have independently created the design or have simply been using the design after copying it from a prior disclosure. The third party will likely not know whether the designer intends to file a design application during the grace period.
Relief from infringement before date of registration
Relief will be provided for a defendant in an infringement case if the defendant was using an identical or similar design before a design application for the design was published. If it can be shown that the defendant was unaware and could not reasonably have been expected to be aware of the design application, the court may reduce or refuse damages or refuse to make an order for an account of profits. This is an extension of the innocent infringer defence.
Removal of the option to publish after filing
To streamline the registration procedure, the option to request publication of the design (e.g. to use the official publication as a defensive strategy by adding the design to the prior art base) has been removed. The design will be published at registration. Registration can be requested at or within 6 months after filing. Publication of the design will occur automatically shortly after registration.
Formal requirements which include requirements for drawings, specification and information included in an application have been moved to a non-legislative instrument to allow for changes to be made to the formal requirements more easily as technology evolves.
Exclusive licensees can bring infringement proceedings
Under the amended act, exclusive licensees will now have standing to bring an infringement action. The registered owner of the registered design will need to be made a defendant in the proceedings (unless the registered owner is joined as a plaintiff) but will not be required to pay costs associated with the proceedings.
Changes to standard of the “informed user”
To determine whether a design is substantially similar in overall impression to another design in determining newness and distinctiveness, the design must be reviewed by a person who is familiar with the product. Previously, the standard of the informed user was applied in determining substantial similarity. Under the amended Act, the familiar person does not have to be a user of the product.
This new act will likely encourage more designers to exploit the designs system to protect their designs. Therefore, if you have any questions about registered designs and how intellectual property may be able to help you in protecting your designs, please feel free to come and speak to one of our patent attorneys.