ACIP Designs Review Recommendations 18(a), 18(c) and 18(f) (technical issues)

Issue summary

In its 2015 Review of the Designs System in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended a number of legislative amendments to address technical issues identified by stakeholders. Specifically, ACIP recommended:

• That rules regarding the identity of Convention applicants be made consistent with rules relating to designs (Rec 18a)
• That courts should have the power, similar to that available under the Patents Act 1990 to refuse to revoke a design registration on the basis of lack of entitlement of the named applicant on appropriate circumstances (Rec 18c), and
• The ground of revocation on the basis of fraud, false suggestion or misrepresentation should extend to fraud, for example, during certification (not just registration) (Rec 18f).

The Government accepted the recommendations in May 2016 with the proviso that Australia will continue to comply with relevant international treaties and conventions; and any change to the Designs Act 2003 does not result in an unintended advantage of one type of application (i.e. convention) over another type of application (i.e. non-convention claim).

History

• On hold 4 September 2017
• Consultation 31 October 2019 to 20 December 2019
• Policy development 20 December 2019 to 12 May 2020
• Legislative drafting 12 May 2020 to 23 July 2020
• Consultation 23 July 2020 to 28 August 2020
• Legislative drafting 28 August 2020 to 2 December 2020
• In Parliament 2 December 2020 to 30 August 2021
• Royal Assent 10 September 2021
• Completed 10 September 2021

Comments

These issues are included in the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 which received Royal Assent on 10 September 2021.

Related policy issues

Policy ID: 46 - Recommendation 18(h)

Policy ID: 61 - Recommendation 18(i)

Policy ID: 116 - Recommendations 18(b), 18(d), 18(e) and 18(g)