Allow exclusive licensee to bring proceedings for infringement under Designs Acts

At a glance

Policy ID: 46

Status: Completed

Priority: High

Design rights ACIP

Issue summary

In its 2015 'Review of the Designs System' in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended  (Recommendation 18(h)) amendments be made to the Designs Act to give exclusive licensees of designs the right to bring proceedings for infringement of those rights. The government accepted this recommendation in May 2016.

IP legislation treats exclusive licensees of IP rights inconsistently when it comes to the ability to bring proceedings for infringement. In particular, exclusive licensees of patents, trade marks and plant breeder’s rights have the right to bring infringement proceedings under certain conditions. However, exclusive licensees of designs do not have legal standing to bring proceedings for infringement. This can cause problems for exclusive licensees of these rights when the owner of the right is unwilling or unable to enforce their rights, and can complicate licensing negotiations.

History

  • On hold 04-Sept-2017
  • Consultation 31-Oct-2019 to 20-Dec-2019
  • Policy development 20-Dec-2019 to 12-May-2020
  • Legislative drafting 12-May-2020 to 23-Jul-2020
  • Consultation 23-Jul-2020 to 28-Aug-2020
  • Legislative drafting 28-Aug-2020 to 02-Dec-2020
  • In Parliament 02-Dec-2020 to 30 August 2021
  • Royal Assent 10 September 2021
  • Completed 10 September 2021

Comments

This issue is included in the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 which received Royal Assent on 10 September 2021.

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