The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Act) received Royal Assent on 10 September 2021.
The Act amends the Designs Act 2003 (the Designs Act). It puts in place several recommendations accepted by the government. These were made by the former Advisory Council on Intellectual Property’s (ACIP) Review of the Designs System (ACIP Report).
The Act has 7 schedules:
- Schedule 1 — introduces a 12-month grace period to file a design application.
- Schedule 2 — protects third parties from infringement of designs only if they started using a design before an application for registration is filed.
- Schedule 3 — removes the option to publish a design without registration. Also simplifies the process of requesting registration.
- Schedule 4 — protects those who infringe a design between filing and registration but have no way to know the design is protected.
- Schedule 5 — allows exclusive licensees of design rights to take action against infringers without needing to rely on the design’s owner.
- Schedule 6 — streamlines the process for changing formal requirements for design applications.
- Schedule 7 — makes minor technical changes to clarify some matters in designs legislation.
The Act recieved Royal Assent on 10 September 2021. The various schedules of the Act will commence:
1 to 6
7 Part 3
|10 March 2022|
|7 Parts 1 and 2||11 September 2021|
Schedule 1 introduces a 12-month grace period for filing a design application. The grace period protects designers who disclose their design before filing for protection. This could be accidentally, or because they didn’t know that they needed to file for protection before disclosure. For example, a designer who unintentionally publishes a design on social media can still seek protection for it within 12 months.
You must file for a design right within 12 months of disclosure to receive these benefits.
You can file for protection during the grace period if the original disclosure of the design was by:
The designer or designers;
The owner of the design where this is someone other than the designer (e.g. an employer, or a successor in title);
A party authorised by the designer or design owner - for example, a marketing company releases a publication authorised by the owner; or
A party who obtained the design from the designer or design owner without their permission - for example if the design is stolen.
Publications of designs by the following aren’t eligible for the grace period:
The Registrar of Designs.
Foreign and international designs offices.
Schedule 2 introduces an infringement exemption. The exemption protects third parties against infringing someone else’s design. This applies only if the third party starts using a design before the priority date of a registered design. It applies if the third party independently creates the design, or they copy it from a disclosure by the design owner before the priority date.
Schedule 2 also protects people who legally obtain products from a third party, allowing them to use and sell those products without infringing the design.
This reform balances the rights of designers and third parties after the introduction of the grace period. Third parties may not be aware of a designer’s intent to file a design application within the grace period.
If you start using a design before the priority date of its application for registration, you will be able to continue:
This is in respect of which the design is registered without infringing the design right.
Schedule 3 streamlines the application and registration process. It removes the option to publish a design without registering it.
You will be able to file a request for registration with the design application or during the 6-month period after it’s lodged. If a request is not made during this time, the design will automatically proceed to registration.
If you do not want to register the design, you must request withdrawal of the application within the 6-month period.
The following diagram sets out how the new application and registration process will work:
Schedule 4 extends the current ‘innocent infringer’ defence. The ‘innocent infringer’ defence prevents third parties being liable for infringing a design when they do not know the design is registered.
The change expands the defence so it also applies to the period between the filing date of a design application and the date of registration (approx. 6 months). During this period, the design is not publicly available on the Register of Designs. This means that even a third party searching the Register may not be able to know that a design has been protected. So, there is a risk of infringement.
You must prove you did not know and had no reasonable way to know, that an application for design registration existed to benefit from the defence.
In such cases of innocent infringement, a court will now have the discretion to:
refuse to award damages
refuse to award an account of profits.
Schedule 5 gives exclusive licensees the right to bring infringement actions under the Designs Act. An exclusive licensee is a person or company who has licensed all the rights to a design in Australia. This is to the exclusion of all others, including the owner of the design.
This change will ensure exclusive licensees can enforce the design rights they have paid and received a licence for. This is because they are likely to suffer the most harm from a design infringement.
Schedule 6 streamlines the process for updating the formal requirements for design applications. Formal requirements are rules about, for example, what information must be included in an application, and how drawings must be presented. This change allows the rules to be easily adapted to keep up with changing technology.
This amendment will give the Registrar of Designs the power to specify formal requirements for design applications by written determination.
We will consult on a draft determination before the end of the year. We will publish the finalised determintion before the commencement of this Schedule.
Schedule 7 makes minor improvements to the Designs Act. These changes help clarify and simplify the designs system. There are 3 parts to the Schedule.
Part 1 Standard of the informed user
Part 2 Revocation of registration of design
Part 3 Renewal of registration of design
Further information on each Part is available in the Explanatory Memorandum.
Amendments to the Design Regulations will support the Act. Schedules 1, 2, 4 and 5 of the proposed regulation amendments make amendments resulting from the changes made by the Act.
Schedule 3 of the amendments will make a further change. It provides consistency between entitlement to own a registered design in the Designs Act and the entitlement to make an application under the Paris Convention.
In 2015 ACIP consulted on these issues as part of its review of the designs system.
In 2019 we sought stakeholder views on several options. These options put in place accepted recommendations from the ACIP Report.
In 2020 we released an exposure draft of the Bill and regulations to seek stakeholder views.