Automatic publication of designs six months after filing date - amend innocent infringer defence

Issue summary

In its 2015 Review of the Designs System in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended (Recommendation 9) the automatic publication of designs at six months after the filing date, with the possibility to request publication earlier if desired. An amendment to the innocent infringer defence, in subsection 75(2) of the Designs Act 2003, would accommodate this change.

Currently in Australia, design registrations are usually published within two to three weeks. Other jurisdictions allow design applicants to defer publication of their design. This enables applicants to obtain a priority date, but without having their design made available to the public.

Deferral of publication allows the designer to keep new designs confidential until they are ready to launch in the market. However, the downside of deferred publication is reduced certainty for other stakeholders in the market. The Australian Government noted the recommendation in its response to ACIP in May 2016, and committed IP Australia to carrying out further consultation.

History

• Policy development 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

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

Deferral of publication was not progressed as a similar effect will be achieved by removing the publication option (refer to policy ID:67).