What's changed in the Designs Act?
This webinar focuses specifically on the amendments to the Designs Act that came into effect on 10 March 2022.
These changes include:
- The introduction of the 12-month grace period
- Simplifying the process of registration
- Streamlining the process for changing formal requirements for design applications.
This webinar shows scenarios and examples regarding these changes.
Designs continued
This video is hosted by Veronica.
Veronica:
Hello everyone. Welcome to part two of our webinar series — Designs continued. Today we'll be discussing the recent changes to the Designs Act and what this means in practice. My name is Veronica and I'm part of the communications team at Intellectual Property Australia. We will get started shortly but in the meantime just a few housekeeping things. The session will be recorded so please stay on mute throughout the presentation and we will answer any questions at the end of the presentation. Please feel free to drop any questions in the chat throughout.
Okay we will get started. Just a reminder this session is recorded and we ask that you keep your mic muted throughout. Please feel free to drop questions in the chat and we'll answer them at the end.
Firstly, I would like to acknowledge the traditional custodians of the land which we are meeting on today. For me this is Ngunnawal land. I wish to acknowledge and pay my respects to their continuing culture and contribution they make, the life of this city and the region. I would like to also acknowledge and welcome other Aboriginal and Torres Strait Islander people who may be attending today's event.
Welcome to our Designs continued presentation. I would like to introduce our speakers. Derek White joined IP Australia in 2007 and spent 10 years as a trademark examiner. During that time he was involved with most aspects of trademarks, particularly international trademarks, and then and training new trademark examiners. For the past five years or so he has been a designs examiner and his focus again has been on training new examiners and also helping to update the designs legislation.
Craig is a project officer within the quality practice and customer section within trademarks and the designs group here at IP Australia. He has a 15 years experience at IP Australia across both designs and trademark IP rights. Craig's recent focus has been on the improvements in the Australian design system to ensure it is fit for purpose and enables designers to implement an IP strategy that supports Australian innovation. Craig has been directly involved in the implementation of the Designs Amendment Advisory Council on Intellectual Property Response Act 2021.
I would now like to hand over to Derek and Craig.
Derek:
We're going to get into it so for those who are, welcome everyone, for those who are here at yesterday's session I’d just like to briefly mention something I may have caused a little bit of confusion. Reviewing the chat there was, it seems like there was some confusion about whether or not the grace period that we're going to talk about today is automatic. Because I think I said might — you might be eligible for it and that is the case so it's not going to be automatic. You will have to do a little bit of work. But Craig's going to talk about that quite a bit. If you've got questions please hang onto them for a little while. We're going to address the grace period first and we're going to in some detail. We'll pause after the grace period section and we'll take questions on the grace period um and then we'll move into the, the last part of the webinar today. So I'll hand over to Craig and we'll get stuck into the grace period.
Craig:
Thanks Derek. Hi everyone. I’ll be walking you through the first half of this webinar. So this first slide will provide some key detail about the Amending Act and I'll also provide you some background. So, in May 2012 the Advisory Council on National Intellectual Properties, ACIP, was asked to investigate the effectiveness of the Australian design system. An issues report was released in 2013 and the final report came in 2015. That came in with notifications. So in 2019 IPA undertook external consultation about which recommendations in that final report might be included as part of this Amending Act and in 2020 we sought views on an exposure draft for this piece of legislation and the explanatory memorandum and state. So the Designs Amendment Advisory Council on Intellectual Property response Amending Acts obviously includes ACIP recommendations that the government agreed to.
So, for example ACIP recommendation five was actually to remove the publication
option which is included in this legislation and recommendation 12 was to create the grace period provision which, of course is also included. Other recommendations from that ACIP report that are not included as part of this piece of legislative reform, um remain active items in our policy register and work is continuing there.
So you'll see here that there's two parts uh we had change to come into effect on 11 September 2021 and obviously recent changes in March 2022. The Schedule 7 changes which commenced in 2021, they'll focus on clarifying the standard informed user that being persons familiar with the product bearing the design or similar products. The informed user wording previously applicable, it still applies to applications before, filed before the commencement date. That's an important point to note. And also the Schedule 7 changes from 2021 including clarifying that a person who files an application that claims convention priority, needs to be an entitled person. So that being a person entitled to be the registered owner.
You'll see here this slide will outline the full scope of changes under this Amending Act. The changes that we are focusing on today are in Schedules 1, 3 and 6 and the ones that we think will have large impact and obviously ones which IP Australia will have a day-to-day role in administering.
We won't be discussing the infringement changes in this webinar. Okay so we begin with the grace period. We think this is the most significant change in this Amending Act and as Derek mentioned before, I will move through the slides and if you do have any questions, we'll take a break at the end of this part of the webinar. I may answer your questions as I move through the material and yeah at the end of this part, if there are any questions that remain you can put them in the chat box um we'll try
to get to them and also if time permits will be able to come back to these perhaps at the end.
So uh getting into it. What can the grace period provision offer? The simple answer is if you've published or publicly used your design on or after 10 March, in a 12-month period before the priority date of a subsequent design application, you may still be eligible for certified protection, so certificate of examination. So previously you had to publish your design before applying to protect it and you were unlikely to be able to properly protect it.
As this slide indicates, the primary aim of the grace period is to protect those who accidentally publish or those who are unaware they needed to file for protection before disclosure. So an example being a designer who unintentionally publishes on their social media accounts perhaps there's the opportunity to still seek protection for it within a 12-month period that follows. Now, so as I mentioned before, there's some really important criteria here. We're talking about publication or use that has occurred on or after 10 March — that is part of the legislation. The publication or use must have taken place within the 12-month period before the priority date of the subsequent application.
What that means is that applications filed on or after 10 March 2022, and where the publication of use or use of the design took place on or after 10 March 2022, are eligible for grace. I say that because any priority claim before this date will mean that the eligible publicational use occurred after, which is something we can't allow. So we'll have a look at some basic scenarios and hopefully that'll help in terms of [indecipherable].
So you'll see here in scenario 1 and scenario 2, the initial publication or use has occurred after 10 March and was within the 12-month period immediately before the priority date. So as I mentioned before, in these cases the publication of use will meet that key criteria that I’ve mentioned.
Turning to scenario 3 and 4 we have some issues. So in scenario 3 you'll see that the publicational use occurred before 10 March which makes it ineligible. In scenario 4 because the publicational use occurred after 10 March 2022, it was after the priority date of the application, which then results in the publication or use being [indecipherable].
Okay going from the key criteria to the who. So this side talks about the who? Who actually published or used the design before an application is submitted? So section 17.1 tells us that we can potentially disregard the publication or use of a design made by a relevant entity or the publicational use of a design made by another person or body that derived or obtained the design from a relevant entity. Examples of a relevant entity are in the first two tick boxes. You'll see either designer or designers or the owner of the designer where someone else where there is someone else other than the designer.
You'll see in the third tick box we've got another party who obtained the design from the owner either with or without permission. That there is an example of another person or party. The key here is that publicational use must be made by the owner or by others who somehow derived or obtained the design from the owner. So this could include a third party authorised by the designer or the designer to publish. So let's say for example a marketing company who publishes the design after being authorised by the owner, or perhaps a third party who obtains a design from the designer or the design owner, without their permission. So for example, it could be a third party posting a review of the product design on their website.
You see in this slide that some publications are in fact excluded from protection under the grace period. If your design has been published on the register by the Registrar of Designs. So for example on Australian Design Search or published overseas by an international designs office, it is not eligible for the grace period.
This comes back to the point I made before about one of the key purposes here is not about previous, not about registered designs that you already have. It's about inadvertent disclosure and accidental disclosure. So, key question following on from that is, how will IP Australia implement this provision? We're not going to apply it as part of the normal course of examination, unless you tell us by providing a declaration before exam. So this might be the time of filing, or it could be at any other time before we examine the design.
If we find a citation, even if we think the publication is likely to have come from the owner of the registered design, we'll continue to raise citations as per normal. We'll include information in our examination report if this is a viable option for you to consider. The owner can then come back to us and provide information to show why the grace period should apply. If we receive a declaration prior to examination, of course we will look at that, and if it meets the requirements we'll be able to apply the grace period and exclude the publications.
So in other words, not site designs that the design under examination is identical or substantially [indecipherable]. The way we think this is most likely to occur in practice is that we’ll examine the design and we'll find, and if we find an earlier publication which would render the design either not new or not distinctive, we'll send a report out just as we currently do detailing the issues. So if the earlier publication meets the grace period criteria, the owner can then send us a declaration with information
about why the grace period should apply.
So as I said before, there is the option to include a grace period declaration at the application filing stage. It is of course optional. It's actually part of the online services filing process. It's in the new application part of it and there is a designs declaration form on our website that can be used. Why have a declaration? Well it's beneficial for us and it's beneficial for the owner of the design under examination. So examination research can give us a clue as to who may have published or used the design. However, there may be situations where what appears to be reality, in fact isn't. Also if we have cited designs that appear to be limited to other persons, so not publication by the owner, a declaration is needed to explain to us how they derive or obtain the design from the owner.
I hope that makes sense. If we can come back to that [indecipherable]. I'll now go into what information you might include in a declaration. This slide includes different examples of information that could be relevant. Some of the examples you'll see here might confirm that the owner of the registered design published the design in the grace period, and some of these examples might confirm how another person or body derived or obtained the design from the owner before publishing the design in the grace period.
So remember the publication by another person could be, can be authorised. You know, it might be that that marketing company has sent something out to say please publish this on a certain date or it could be unauthorised, it was something where a third party simply published it on their website providing a review of a product design.
So what happens when the earliest publication was made by the owner? So if we receive a declaration to the effect that any subsequent publications by third parties, we presume to have been derived or obtained, and what happens when the citations are limited to only publications made by third parties? You'll need to show us how they derive or obtain the design from you the owner. You might then, you might do this by providing information about the publication being authorised by the owner.
There's another way you could also consider this as well. You might show us that you in fact published an identical or a substantially similar design before the third party. Obviously within the grace period um conditions. So on or after 10 March and within 12 months of the priority day. So this being the case and you as the owner in fact have what we call a first design, that is before the cited designed by the third party that we may have found in examination, we'll presume that the third party derived or obtained the design from you.
So as you can, as I've just explained, there are a lot of different scenarios that may come into play um depending upon particulars of what of what your design is and how you published it and what we find as part of examination. Each declaration is going to be different and it's going to depend upon the circumstances that we face. So I think some of the keys in terms of declaration is obviously the owner of the design, who published it, where they published it, why they published it, when was the first publication of it, who controlled the first publication of it, and some evidence of reasons for publication.
We've got here an example of a declaration. This is actually found in our manual as well. It's at 18.6 and you can also find some information on our website as well. We have a particular page dedicated to the grace period. It's at the applying for a design grace period section. And you'll see here that it's a very simple declaration for where the owner has published the design on a social media account before the date of the cited publication.
It confirms that the owner has made the declaration, confirms when and where they first published the design. It provides the information that supports the owner publishing the design, so it's a social media account controlled by and it includes a screen capture with publication data. Obviously those things are referenced at annexes but um something as simple as this is what we would require in you know in a case where we have this particular type of circumstance.
So if a provider declaration doesn't have all the information that we require, we'll write out indicate where it was, where it wasn't sufficient and what else we need to allow for certification under the grace period. The dates of relevant actions are really important in determining if the grace period applies. Evidence provided with declarations that show when certain actions occurred, such as the first publication of the design, are likely to be really useful and the stuff that we want to see.
So if the grace period is applied and the registered design is certified through the use of this benefit, where we looking to record it, um work is underway to include information on Australian Design Search as part of the registration date. So there'll be information on Australian Design Searches to say that certificate of examination has been issued or the design has been certified through the use of the grace period.
I've just got here some information within our manual practice procedure and also there's some information on our website that talks to this concept, goes into the declarations a little bit more, and provides more of that key information as part of looking to use the grace period provision. Remembering that it's publication on or after the 10th of March and within that 12-month period immediately before the priority day. They're really key criteria and in terms of what I touched on before about where it can't be applied, we're looking at designs on Australian Design Search and other registered designs internationally.
Derek:
So we're going to pause here and answer a few of the questions that you guys have asked in the chat. So the first of these is, “Does the grace period apply if the publication was intentional, they're not inadvertent and the designer intended subsequently filing a design application within the 12-month grace period?”
Craig:
So they've intentionally tested the market? Yeah absolutely the grace period can apply, so long as it meets the conditions in that it was published on or after 10 March. I mean it's within that 12-month period before the grace period. Absolutely. However, if the design is on a database, so if it's on a strand design search or if you've gone to get a design right elsewhere, that's where we can't use it. So we're talking about online, we're talking about social media, we're talking about those types of things where um we can absolutely look at using, well using the grace period provision and where we find solvable designs in the prior art base and they are they meet criteria and they're found in those places we can absolutely look at the grace period there.
Derek:
Great. The next question is international. “Can you please clarify what this means if I exhibit at New York Design Week in May 2022, am I still eligible to register that design after that event?”
Craig:
Yes is the answer to that question. Absolutely. So when we're talking about citations we talk about publication and use, of course. And use could include use at New York Designs Week absolutely. So it's where we do our examination and if we find information about that, we find publication of that design at that event, we find it let's say on a social media page or an Instagram page, and it's after the date in question and it's within that 12-month period before a priority date, absolutely. That is something that we can take into account the grace period and then it will be about providing information about who published it, did you publish it, or was it publication by a third party? And if it was a third party, how they went about doing that and how it was derived or obtained from you.
Derek:
I think that also covers the next one which is happening at Milan in June 20. The next question we'll go into is, “What's the motivation for making the grace period more onerous to obtain than under the Patents Act?”
Craig:
Look I can't speak to the Patents Act. I don't have any background in patents so I certainly can't speak to the differences between what we are looking at here and what happens under patents. I think what I would say though is that obviously this grace period provision in designs is incredibly important and as an examiner, we don't have all the information in front of us when conducting examinations and finding publications in the prior [indecipherable].
There will be situations where we will have a fairly good idea if we find that we go to a social media account of the owner of the registered design and it's there, but it's in the owner's best interest and our best interest to absolutely confirm that the publication was by that owner. And if, as I mentioned before, if we find a citation where it doesn't appear to have come from the owner, we need to have some information that talks to how it was derived or obtained because that's within the legislation. That's what we have to cover as part of effectively examining these registered designs.
Derek:
The next question is regarding grace period. “Is publication that occurs after the priority date. What are the consequences of that?”
Craig:
Well if the publication’s after the priority date, we're unable to consider it for the grace period. So it needs to be before. So the consequences are the grace period would not be able to be used. It's within that 12-month period immediately before the priority date of the subsequent design.
Derek:
Next question is, “Can a negative decision on the grace period be taken to a hearing?”
Craig:
Yes. Absolutely. So if we, um uh, we examine the application, we find [indecipherable] and in response the grace period um submission is provided and we are, we believe we're unable to apply the grace period to allow the design to be certified, absolutely there's a right to be heard.
Derek:
“Does the grace period in Australia have similar or the same terms and conditions as our trading partners? For example the EU.”
Craig:
Sorry I can't answer that. I'm not in a position to answer that and I wouldn't have the level of knowledge of what happens in the EU and in that particular jurisdiction.
Derek:
There's quite a lot of information about the grace period, both on our website at the link there, and also in the our examiner's manual. So if you've got other questions about them there's quite a bit of information there, um but yeah we can't go into what might be similar to other jurisdictions.
Craig:
I think a key point to make here is that we will, in terms of us examining registered designs, we’ll continue to carry on as normal. We'll continue to cite where we find citations in the prior art base and this will be an option where applicable for owners to come back and say, “Well you've cited this, it falls within the grace period, here's some information about, I published it and the reason why I published it, or this this person published it because I was derived or obtained from me from these following reasons, or thirdly you've cited this person, I actually published before and therefore you can presume they derived or obtained it from me. So there will be circuits or options that will be available um in response to a first report. So in terms of how we go about doing a job, not much will change. We'll still examine like we normally examine it'll just be an option available for owners if there is grounds for revocation and citations are raised.
Derek:
The next question. “Does IP Australia routinely search for prior publications outside patent and designs databases. It will obviously be more difficult to establish a publication date for?” Uh yes we do that all the time. That's where we spend the majority of our time in examination.
Craig:
Yeah absolutely. So as Derek's pointed out um yes. So we obviously look at Australian Design Search and we look at databases websites um and you know EU IPA, OUSPTO, we will work internationally. We also then do our own online social media, Google, you know those types of things as well. So um it's a wide search absolutely and where we, where we examine applications and where customers fall into a trap um a lot of it’s to do with social media, where they're unaware of the system and they unfortunately pre-publish in social media. And the grace period here has been created and brought in to hopefully assist in those circumstances where the customer was simply unaware of what they needed to do with the certain at a certain point of time.
Derek:
So thanks for all your questions everyone on that. We might crack on with the rest of the presentation. If you do have more questions about the grace period or anything else that comes up, please keep popping into the chat and we'll get to them at the end of the session.
So I'm now going to talk about some of the other changes. So Schedule 3 we've made some changes to the request for registration. So we've streamlined the application and registration process a bit. One of the things was to remove the option to publish a design without registering it. So this was a recommendation from ACIP and it was, to be honest, publication was barely being used. Seems to have become a little bit pointless because unlike in 2003 anyone can easily publish something on the web these days, whether on their own website or on any number of easily accessible social media sites. So it wasn't being used and ACIP recommended we get rid of it. So publication's gone.
We've also made changes to the request for registration. So there's now an automatic request for registration after six months. So as, as normal you can file a request for registration with your application, or you can do it anytime within the six-month period after it's been lodged. If we don't have a request for registration by the six months it will automatically proceed to the queue for a formalities check and to registration if it's going to be something we can register. So this takes the hassle out of trying to remember to file a request for registration.
It's quite common for applicants and their agents to file a request for registration on the very last day of the six-month period. Some people want to keep their design secret for as long as possible and once it's registered we'll publish it, so they want to delay registration as long as possible. So this just means one less date to try and keep track of. One less thing to possibly have your design lapse.
This does mean if you change your mind after applying for the design, you'll have to request withdrawal of the application within the six-month time period and this period can't be extended to withdraw. So as soon as it hits six months it will hit the queue for registration or for a formalities check and subsequent registration. So the overall impact is trying to reduce the number of deadlines that people need to keep track of and reduce the risk of applications lapsing. I think these are fairly reasonable changes. I don't think there'll be too many issues with them. Most of these changes other than the grace period, the sort of quality of life changes for applicants and agents and for IP Australia to make it easier to, to examine things but also to increase the clarity of what appears on the register.
I've got a very brief flowchart. It’s a very simple flowchart of what happens now. So on the left hand side, you apply for your design. If you request registration straight up, your application will go right into the queue for a formalities check and we'll proceed as normal from there. If you don't provide a request for registration at filing, you can do that with at any time within the six months and as soon as you do, it will go into the queue. If you don't, the day that it's six months it will automatically be taken as if a request for registration has occurred.
We've also updated the formal requirements for a design application. So formal requirements are rules about what kind of information needs to be included in the application and how the representations provided with that should be presented. So there's two key changes. The main one is that these are no longer governed by Schedule 2 of the design regulations. We've moved the, we've replaced Schedule 2 with a non-legislative instrument, which is published on our IP legislation page on IP Australia's website. And this makes it a little bit easier for us to, quite a bit easier for us to make changes to the formal requirements. And whilst we don't intend to be changing them very often, um, we don't always need to go through parliament from now on to make changes to keep up with changing technology.
And the second key change is that we've reviewed and updated some of these formal requirements in an attempt to reduce the regulatory burden on applicants and their agents. And again as I mentioned, to try and increase the clarity of what appears on the register. So the second that these changes occurred after a consultation process that many of you may have been involved with, we had submissions from a variety of stakeholders. The changes are relatively minor and we've aimed to strike a balance between achieving clarity on the register and minimising the burden and cost for customers.
We’ll go into a little bit more detail on some of these. The first one is we now require a phone number with your application. So a phone number allows us to contact an applicant or their agent, but in all honesty it's usually unrepresented applicants. If there's an issue that might be resolved quickly, sometimes a phone call's just easier. It's an easier way to discuss if someone's really missed the mark or has done something wildly outside what's normally expected in a design application. Having a chat on the phone can be a lot easier than sending out a full report.
Some of the other things, the rest of them are in on this page. As I keep saying trying to increase the clarity of what appears on the register. So at least one application, one representation in the application must show the product fully assembled. Representations should be applied, should be provided without extraneous matter. Representations should clearly show all of the division of visual features of the design for the product. And wherever a statement of uniqueness and distinctiveness mentions visual features, those features that are mentioned, must appear in at least one of the representations. So again these are improved in increasing the clarity and a lot of these, apart from the phone number, we already kind of do. This just gives a bit of, a little bit of extra oomph to be able to enforce what we're largely doing already in this space.
A few more changes. So environmental views or reference views. Obviously they can already be included. I’ve just added a little bit in there too that they need to be, that they can't create uncertainty about the design that's been applied for. And one part of that is that preferably we'd like no more than one environmental view, unless there's a good reason for it. We've found that more than one environmental or reference view can often create a bit of, a bit of an issue with the clarity of what's exactly been applied for.
We've also added a bit about multiple image formats, so they should be avoided. We've had in the past, we've had applications which have included representations in various different formats. And by that I mean some of the representations have been line drawings, some have been cad drawings and some have been photographs — all trying to show the same design. But you can't really show the same detail in a line drawing, a cad drawing and a photograph. There's always going to be a bit more or a bit less in each of those different things which can sort of raise the question of whether or not there are, there's more than one design in the application. And again it can make it a little bit unclear about what's being applied for.
Design's claiming indefinite dimensions must show those dimensions in a clear and readily understandable manner. Again, we've had most applications that show indefinite, the claim in definite dimensions are great, and they show it really clearly. We do have, we have had some where people have gone out for some very strange and difficult to understand methods of trying to show indefinite length. So, we want those to be to be clear so everyone can see that the design applied for is for indefinite length or indefinite dimensions.
And the last one on here is where representations include unclear labelling, we can require that appropriate labelling be added. So this might be if a cross-sectional view has been provided and it's not clear where it's come from, or it's not clear that it is a cross-section view, we can require that that be labelled to indicate what it actually is.
Craig:
Sorry make sure everyone can hear me. I've got a question here. “Do design drawings need to be labelled with views? So front views, rear views?” Look it's very helpful for us. We definitely want that type of information so that we can be certain that we're doing the right job in registering the design and ensuring that the design that you've applied for and the fees you paid match up. So you know, if you paid for one design we can be sure that the representations show one design. And also it helps when these designs are registered publicly that people can understand the scope of the registration that we have.
So it's certainly information that we absolutely encourage and where we are unsure about what a representation shows and we don't have labelling, we will ask you to provide something so that we can understand what you're trying to show us in the representation and we can be sure that we've got that it shows the design being applied for and that the representations match the fees that you paid, and your intention to file one design or more than one design, for a common design, the options that you have at that stage.
Derek:
Thanks Craig. And that's me pretty well done with this part. So if you do have any more questions um again there's a bunch of information on our website in our examiner's manual and there's also a link there to the official journal of designs should you want to go to see that. So if you can pop any more questions you have into the chat uh we'll just mute for a minute or two, give people a chance to put their questions in. And I believe Veronica has a little bit more to say and then we'll come back and answer some questions.
Veronica:
Sure. I just wanted to remind everyone we do have our customer service number. We’ve popped the number in the chat so if there's any questions that come out after our webinar, you can always give them a call. We are going to email out a recording of the presentation. We'll probably do that without a day or two.
Derek we already have a question. “Do design drawings need to be labelled with views? I.e. front view, rear view etc.” So I think that's very similar to the question Craig just answered.
Craig:
Yes. I’m happy to answer that again. So yes. It is very helpful for us. So when we are looking at an application for a design and we're doing the formalities assessment on it, we want to make sure that the representations match the number of designs being applied for. So if you're applying for one design, we want to make sure that representations show one design. Labelling helps us to make sure we understand the scope of the design you're coming for. And if we don't have labelling and we look at a representation, we're unsure of what it's trying to show or what type of view — whether it's a side view, [indecipherable] not necessarily exploiting view, side view, front view — we’ll ask you to provide it if there's uncertainty about what you've applied for. Absolutely.
Veronica:
Great um and we have another question. “Do disclosures after the priority date impact the assessment of the newness and the distinctiveness of the design?”
Craig:
So in terms of relying on the grace period, we, it will because we're unable to take into account disclosures made after the immediately after the priority date. But what we're talking about, if you're talking about generally how we go about examining, we're obviously worried about [indecipherable] so and that's obviously before the priority date in terms of that are too similar to the registered design standard examination.
Veronica:
Yeah great. I don't think we have any other questions so we might just end the presentation here. But as I mentioned earlier, you can always give us a call or shoot us an email or contact us on any of our social channels. So thank you so much to everyone uh for joining us today and we hope you enjoyed the presentation. Thank you.
Veronica:
Hello everyone. Welcome to part two of our webinar series — Designs continued. Today we'll be discussing the recent changes to the Designs Act and what this means in practice. My name is Veronica and I'm part of the communications team at Intellectual Property Australia. We will get started shortly but in the meantime just a few housekeeping things. The session will be recorded so please stay on mute throughout the presentation and we will answer any questions at the end of the presentation. Please feel free to drop any questions in the chat throughout.
Okay we will get started. Just a reminder this session is recorded and we ask that you keep your mic muted throughout. Please feel free to drop questions in the chat and we'll answer them at the end.
Firstly, I would like to acknowledge the traditional custodians of the land which we are meeting on today. For me this is Ngunnawal land. I wish to acknowledge and pay my respects to their continuing culture and contribution they make, the life of this city and the region. I would like to also acknowledge and welcome other Aboriginal and Torres Strait Islander people who may be attending today's event.
Welcome to our Designs continued presentation. I would like to introduce our speakers. Derek White joined IP Australia in 2007 and spent 10 years as a trademark examiner. During that time he was involved with most aspects of trademarks, particularly international trademarks, and then and training new trademark examiners. For the past five years or so he has been a designs examiner and his focus again has been on training new examiners and also helping to update the designs legislation.
Craig is a project officer within the quality practice and customer section within trademarks and the designs group here at IP Australia. He has a 15 years experience at IP Australia across both designs and trademark IP rights. Craig's recent focus has been on the improvements in the Australian design system to ensure it is fit for purpose and enables designers to implement an IP strategy that supports Australian innovation. Craig has been directly involved in the implementation of the Designs Amendment Advisory Council on Intellectual Property Response Act 2021.
I would now like to hand over to Derek and Craig.
Derek:
We're going to get into it so for those who are, welcome everyone, for those who are here at yesterday's session I’d just like to briefly mention something I may have caused a little bit of confusion. Reviewing the chat there was, it seems like there was some confusion about whether or not the grace period that we're going to talk about today is automatic. Because I think I said might — you might be eligible for it and that is the case so it's not going to be automatic. You will have to do a little bit of work. But Craig's going to talk about that quite a bit. If you've got questions please hang onto them for a little while. We're going to address the grace period first and we're going to in some detail. We'll pause after the grace period section and we'll take questions on the grace period um and then we'll move into the, the last part of the webinar today. So I'll hand over to Craig and we'll get stuck into the grace period.
Craig:
Thanks Derek. Hi everyone. I’ll be walking you through the first half of this webinar. So this first slide will provide some key detail about the Amending Act and I'll also provide you some background. So, in May 2012 the Advisory Council on National Intellectual Properties, ACIP, was asked to investigate the effectiveness of the Australian design system. An issues report was released in 2013 and the final report came in 2015. That came in with notifications. So in 2019 IPA undertook external consultation about which recommendations in that final report might be included as part of this Amending Act and in 2020 we sought views on an exposure draft for this piece of legislation and the explanatory memorandum and state. So the Designs Amendment Advisory Council on Intellectual Property response Amending Acts obviously includes ACIP recommendations that the government agreed to.
So, for example ACIP recommendation five was actually to remove the publication
option which is included in this legislation and recommendation 12 was to create the grace period provision which, of course is also included. Other recommendations from that ACIP report that are not included as part of this piece of legislative reform, um remain active items in our policy register and work is continuing there.
So you'll see here that there's two parts uh we had change to come into effect on 11 September 2021 and obviously recent changes in March 2022. The Schedule 7 changes which commenced in 2021, they'll focus on clarifying the standard informed user that being persons familiar with the product bearing the design or similar products. The informed user wording previously applicable, it still applies to applications before, filed before the commencement date. That's an important point to note. And also the Schedule 7 changes from 2021 including clarifying that a person who files an application that claims convention priority, needs to be an entitled person. So that being a person entitled to be the registered owner.
You'll see here this slide will outline the full scope of changes under this Amending Act. The changes that we are focusing on today are in Schedules 1, 3 and 6 and the ones that we think will have large impact and obviously ones which IP Australia will have a day-to-day role in administering.
We won't be discussing the infringement changes in this webinar. Okay so we begin with the grace period. We think this is the most significant change in this Amending Act and as Derek mentioned before, I will move through the slides and if you do have any questions, we'll take a break at the end of this part of the webinar. I may answer your questions as I move through the material and yeah at the end of this part, if there are any questions that remain you can put them in the chat box um we'll try
to get to them and also if time permits will be able to come back to these perhaps at the end.
So uh getting into it. What can the grace period provision offer? The simple answer is if you've published or publicly used your design on or after 10 March, in a 12-month period before the priority date of a subsequent design application, you may still be eligible for certified protection, so certificate of examination. So previously you had to publish your design before applying to protect it and you were unlikely to be able to properly protect it.
As this slide indicates, the primary aim of the grace period is to protect those who accidentally publish or those who are unaware they needed to file for protection before disclosure. So an example being a designer who unintentionally publishes on their social media accounts perhaps there's the opportunity to still seek protection for it within a 12-month period that follows. Now, so as I mentioned before, there's some really important criteria here. We're talking about publication or use that has occurred on or after 10 March — that is part of the legislation. The publication or use must have taken place within the 12-month period before the priority date of the subsequent application.
What that means is that applications filed on or after 10 March 2022, and where the publication of use or use of the design took place on or after 10 March 2022, are eligible for grace. I say that because any priority claim before this date will mean that the eligible publicational use occurred after, which is something we can't allow. So we'll have a look at some basic scenarios and hopefully that'll help in terms of [indecipherable].
So you'll see here in scenario 1 and scenario 2, the initial publication or use has occurred after 10 March and was within the 12-month period immediately before the priority date. So as I mentioned before, in these cases the publication of use will meet that key criteria that I’ve mentioned.
Turning to scenario 3 and 4 we have some issues. So in scenario 3 you'll see that the publicational use occurred before 10 March which makes it ineligible. In scenario 4 because the publicational use occurred after 10 March 2022, it was after the priority date of the application, which then results in the publication or use being [indecipherable].
Okay going from the key criteria to the who. So this side talks about the who? Who actually published or used the design before an application is submitted? So section 17.1 tells us that we can potentially disregard the publication or use of a design made by a relevant entity or the publicational use of a design made by another person or body that derived or obtained the design from a relevant entity. Examples of a relevant entity are in the first two tick boxes. You'll see either designer or designers or the owner of the designer where someone else where there is someone else other than the designer.
You'll see in the third tick box we've got another party who obtained the design from the owner either with or without permission. That there is an example of another person or party. The key here is that publicational use must be made by the owner or by others who somehow derived or obtained the design from the owner. So this could include a third party authorised by the designer or the designer to publish. So let's say for example a marketing company who publishes the design after being authorised by the owner, or perhaps a third party who obtains a design from the designer or the design owner, without their permission. So for example, it could be a third party posting a review of the product design on their website.
You see in this slide that some publications are in fact excluded from protection under the grace period. If your design has been published on the register by the Registrar of Designs. So for example on Australian Design Search or published overseas by an international designs office, it is not eligible for the grace period.
This comes back to the point I made before about one of the key purposes here is not about previous, not about registered designs that you already have. It's about inadvertent disclosure and accidental disclosure. So, key question following on from that is, how will IP Australia implement this provision? We're not going to apply it as part of the normal course of examination, unless you tell us by providing a declaration before exam. So this might be the time of filing, or it could be at any other time before we examine the design.
If we find a citation, even if we think the publication is likely to have come from the owner of the registered design, we'll continue to raise citations as per normal. We'll include information in our examination report if this is a viable option for you to consider. The owner can then come back to us and provide information to show why the grace period should apply. If we receive a declaration prior to examination, of course we will look at that, and if it meets the requirements we'll be able to apply the grace period and exclude the publications.
So in other words, not site designs that the design under examination is identical or substantially [indecipherable]. The way we think this is most likely to occur in practice is that we’ll examine the design and we'll find, and if we find an earlier publication which would render the design either not new or not distinctive, we'll send a report out just as we currently do detailing the issues. So if the earlier publication meets the grace period criteria, the owner can then send us a declaration with information
about why the grace period should apply.
So as I said before, there is the option to include a grace period declaration at the application filing stage. It is of course optional. It's actually part of the online services filing process. It's in the new application part of it and there is a designs declaration form on our website that can be used. Why have a declaration? Well it's beneficial for us and it's beneficial for the owner of the design under examination. So examination research can give us a clue as to who may have published or used the design. However, there may be situations where what appears to be reality, in fact isn't. Also if we have cited designs that appear to be limited to other persons, so not publication by the owner, a declaration is needed to explain to us how they derive or obtain the design from the owner.
I hope that makes sense. If we can come back to that [indecipherable]. I'll now go into what information you might include in a declaration. This slide includes different examples of information that could be relevant. Some of the examples you'll see here might confirm that the owner of the registered design published the design in the grace period, and some of these examples might confirm how another person or body derived or obtained the design from the owner before publishing the design in the grace period.
So remember the publication by another person could be, can be authorised. You know, it might be that that marketing company has sent something out to say please publish this on a certain date or it could be unauthorised, it was something where a third party simply published it on their website providing a review of a product design.
So what happens when the earliest publication was made by the owner? So if we receive a declaration to the effect that any subsequent publications by third parties, we presume to have been derived or obtained, and what happens when the citations are limited to only publications made by third parties? You'll need to show us how they derive or obtain the design from you the owner. You might then, you might do this by providing information about the publication being authorised by the owner.
There's another way you could also consider this as well. You might show us that you in fact published an identical or a substantially similar design before the third party. Obviously within the grace period um conditions. So on or after 10 March and within 12 months of the priority day. So this being the case and you as the owner in fact have what we call a first design, that is before the cited designed by the third party that we may have found in examination, we'll presume that the third party derived or obtained the design from you.
So as you can, as I've just explained, there are a lot of different scenarios that may come into play um depending upon particulars of what of what your design is and how you published it and what we find as part of examination. Each declaration is going to be different and it's going to depend upon the circumstances that we face. So I think some of the keys in terms of declaration is obviously the owner of the design, who published it, where they published it, why they published it, when was the first publication of it, who controlled the first publication of it, and some evidence of reasons for publication.
We've got here an example of a declaration. This is actually found in our manual as well. It's at 18.6 and you can also find some information on our website as well. We have a particular page dedicated to the grace period. It's at the applying for a design grace period section. And you'll see here that it's a very simple declaration for where the owner has published the design on a social media account before the date of the cited publication.
It confirms that the owner has made the declaration, confirms when and where they first published the design. It provides the information that supports the owner publishing the design, so it's a social media account controlled by and it includes a screen capture with publication data. Obviously those things are referenced at annexes but um something as simple as this is what we would require in you know in a case where we have this particular type of circumstance.
So if a provider declaration doesn't have all the information that we require, we'll write out indicate where it was, where it wasn't sufficient and what else we need to allow for certification under the grace period. The dates of relevant actions are really important in determining if the grace period applies. Evidence provided with declarations that show when certain actions occurred, such as the first publication of the design, are likely to be really useful and the stuff that we want to see.
So if the grace period is applied and the registered design is certified through the use of this benefit, where we looking to record it, um work is underway to include information on Australian Design Search as part of the registration date. So there'll be information on Australian Design Searches to say that certificate of examination has been issued or the design has been certified through the use of the grace period.
I've just got here some information within our manual practice procedure and also there's some information on our website that talks to this concept, goes into the declarations a little bit more, and provides more of that key information as part of looking to use the grace period provision. Remembering that it's publication on or after the 10th of March and within that 12-month period immediately before the priority day. They're really key criteria and in terms of what I touched on before about where it can't be applied, we're looking at designs on Australian Design Search and other registered designs internationally.
Derek:
So we're going to pause here and answer a few of the questions that you guys have asked in the chat. So the first of these is, “Does the grace period apply if the publication was intentional, they're not inadvertent and the designer intended subsequently filing a design application within the 12-month grace period?”
Craig:
So they've intentionally tested the market? Yeah absolutely the grace period can apply, so long as it meets the conditions in that it was published on or after 10 March. I mean it's within that 12-month period before the grace period. Absolutely. However, if the design is on a database, so if it's on a strand design search or if you've gone to get a design right elsewhere, that's where we can't use it. So we're talking about online, we're talking about social media, we're talking about those types of things where um we can absolutely look at using, well using the grace period provision and where we find solvable designs in the prior art base and they are they meet criteria and they're found in those places we can absolutely look at the grace period there.
Derek:
Great. The next question is international. “Can you please clarify what this means if I exhibit at New York Design Week in May 2022, am I still eligible to register that design after that event?”
Craig:
Yes is the answer to that question. Absolutely. So when we're talking about citations we talk about publication and use, of course. And use could include use at New York Designs Week absolutely. So it's where we do our examination and if we find information about that, we find publication of that design at that event, we find it let's say on a social media page or an Instagram page, and it's after the date in question and it's within that 12-month period before a priority date, absolutely. That is something that we can take into account the grace period and then it will be about providing information about who published it, did you publish it, or was it publication by a third party? And if it was a third party, how they went about doing that and how it was derived or obtained from you.
Derek:
I think that also covers the next one which is happening at Milan in June 20. The next question we'll go into is, “What's the motivation for making the grace period more onerous to obtain than under the Patents Act?”
Craig:
Look I can't speak to the Patents Act. I don't have any background in patents so I certainly can't speak to the differences between what we are looking at here and what happens under patents. I think what I would say though is that obviously this grace period provision in designs is incredibly important and as an examiner, we don't have all the information in front of us when conducting examinations and finding publications in the prior [indecipherable].
There will be situations where we will have a fairly good idea if we find that we go to a social media account of the owner of the registered design and it's there, but it's in the owner's best interest and our best interest to absolutely confirm that the publication was by that owner. And if, as I mentioned before, if we find a citation where it doesn't appear to have come from the owner, we need to have some information that talks to how it was derived or obtained because that's within the legislation. That's what we have to cover as part of effectively examining these registered designs.
Derek:
The next question is regarding grace period. “Is publication that occurs after the priority date. What are the consequences of that?”
Craig:
Well if the publication’s after the priority date, we're unable to consider it for the grace period. So it needs to be before. So the consequences are the grace period would not be able to be used. It's within that 12-month period immediately before the priority date of the subsequent design.
Derek:
Next question is, “Can a negative decision on the grace period be taken to a hearing?”
Craig:
Yes. Absolutely. So if we, um uh, we examine the application, we find [indecipherable] and in response the grace period um submission is provided and we are, we believe we're unable to apply the grace period to allow the design to be certified, absolutely there's a right to be heard.
Derek:
“Does the grace period in Australia have similar or the same terms and conditions as our trading partners? For example the EU.”
Craig:
Sorry I can't answer that. I'm not in a position to answer that and I wouldn't have the level of knowledge of what happens in the EU and in that particular jurisdiction.
Derek:
There's quite a lot of information about the grace period, both on our website at the link there, and also in the our examiner's manual. So if you've got other questions about them there's quite a bit of information there, um but yeah we can't go into what might be similar to other jurisdictions.
Craig:
I think a key point to make here is that we will, in terms of us examining registered designs, we’ll continue to carry on as normal. We'll continue to cite where we find citations in the prior art base and this will be an option where applicable for owners to come back and say, “Well you've cited this, it falls within the grace period, here's some information about, I published it and the reason why I published it, or this this person published it because I was derived or obtained from me from these following reasons, or thirdly you've cited this person, I actually published before and therefore you can presume they derived or obtained it from me. So there will be circuits or options that will be available um in response to a first report. So in terms of how we go about doing a job, not much will change. We'll still examine like we normally examine it'll just be an option available for owners if there is grounds for revocation and citations are raised.
Derek:
The next question. “Does IP Australia routinely search for prior publications outside patent and designs databases. It will obviously be more difficult to establish a publication date for?” Uh yes we do that all the time. That's where we spend the majority of our time in examination.
Craig:
Yeah absolutely. So as Derek's pointed out um yes. So we obviously look at Australian Design Search and we look at databases websites um and you know EU IPA, OUSPTO, we will work internationally. We also then do our own online social media, Google, you know those types of things as well. So um it's a wide search absolutely and where we, where we examine applications and where customers fall into a trap um a lot of it’s to do with social media, where they're unaware of the system and they unfortunately pre-publish in social media. And the grace period here has been created and brought in to hopefully assist in those circumstances where the customer was simply unaware of what they needed to do with the certain at a certain point of time.
Derek:
So thanks for all your questions everyone on that. We might crack on with the rest of the presentation. If you do have more questions about the grace period or anything else that comes up, please keep popping into the chat and we'll get to them at the end of the session.
So I'm now going to talk about some of the other changes. So Schedule 3 we've made some changes to the request for registration. So we've streamlined the application and registration process a bit. One of the things was to remove the option to publish a design without registering it. So this was a recommendation from ACIP and it was, to be honest, publication was barely being used. Seems to have become a little bit pointless because unlike in 2003 anyone can easily publish something on the web these days, whether on their own website or on any number of easily accessible social media sites. So it wasn't being used and ACIP recommended we get rid of it. So publication's gone.
We've also made changes to the request for registration. So there's now an automatic request for registration after six months. So as, as normal you can file a request for registration with your application, or you can do it anytime within the six-month period after it's been lodged. If we don't have a request for registration by the six months it will automatically proceed to the queue for a formalities check and to registration if it's going to be something we can register. So this takes the hassle out of trying to remember to file a request for registration.
It's quite common for applicants and their agents to file a request for registration on the very last day of the six-month period. Some people want to keep their design secret for as long as possible and once it's registered we'll publish it, so they want to delay registration as long as possible. So this just means one less date to try and keep track of. One less thing to possibly have your design lapse.
This does mean if you change your mind after applying for the design, you'll have to request withdrawal of the application within the six-month time period and this period can't be extended to withdraw. So as soon as it hits six months it will hit the queue for registration or for a formalities check and subsequent registration. So the overall impact is trying to reduce the number of deadlines that people need to keep track of and reduce the risk of applications lapsing. I think these are fairly reasonable changes. I don't think there'll be too many issues with them. Most of these changes other than the grace period, the sort of quality of life changes for applicants and agents and for IP Australia to make it easier to, to examine things but also to increase the clarity of what appears on the register.
I've got a very brief flowchart. It’s a very simple flowchart of what happens now. So on the left hand side, you apply for your design. If you request registration straight up, your application will go right into the queue for a formalities check and we'll proceed as normal from there. If you don't provide a request for registration at filing, you can do that with at any time within the six months and as soon as you do, it will go into the queue. If you don't, the day that it's six months it will automatically be taken as if a request for registration has occurred.
We've also updated the formal requirements for a design application. So formal requirements are rules about what kind of information needs to be included in the application and how the representations provided with that should be presented. So there's two key changes. The main one is that these are no longer governed by Schedule 2 of the design regulations. We've moved the, we've replaced Schedule 2 with a non-legislative instrument, which is published on our IP legislation page on IP Australia's website. And this makes it a little bit easier for us to, quite a bit easier for us to make changes to the formal requirements. And whilst we don't intend to be changing them very often, um, we don't always need to go through parliament from now on to make changes to keep up with changing technology.
And the second key change is that we've reviewed and updated some of these formal requirements in an attempt to reduce the regulatory burden on applicants and their agents. And again as I mentioned, to try and increase the clarity of what appears on the register. So the second that these changes occurred after a consultation process that many of you may have been involved with, we had submissions from a variety of stakeholders. The changes are relatively minor and we've aimed to strike a balance between achieving clarity on the register and minimising the burden and cost for customers.
We’ll go into a little bit more detail on some of these. The first one is we now require a phone number with your application. So a phone number allows us to contact an applicant or their agent, but in all honesty it's usually unrepresented applicants. If there's an issue that might be resolved quickly, sometimes a phone call's just easier. It's an easier way to discuss if someone's really missed the mark or has done something wildly outside what's normally expected in a design application. Having a chat on the phone can be a lot easier than sending out a full report.
Some of the other things, the rest of them are in on this page. As I keep saying trying to increase the clarity of what appears on the register. So at least one application, one representation in the application must show the product fully assembled. Representations should be applied, should be provided without extraneous matter. Representations should clearly show all of the division of visual features of the design for the product. And wherever a statement of uniqueness and distinctiveness mentions visual features, those features that are mentioned, must appear in at least one of the representations. So again these are improved in increasing the clarity and a lot of these, apart from the phone number, we already kind of do. This just gives a bit of, a little bit of extra oomph to be able to enforce what we're largely doing already in this space.
A few more changes. So environmental views or reference views. Obviously they can already be included. I’ve just added a little bit in there too that they need to be, that they can't create uncertainty about the design that's been applied for. And one part of that is that preferably we'd like no more than one environmental view, unless there's a good reason for it. We've found that more than one environmental or reference view can often create a bit of, a bit of an issue with the clarity of what's exactly been applied for.
We've also added a bit about multiple image formats, so they should be avoided. We've had in the past, we've had applications which have included representations in various different formats. And by that I mean some of the representations have been line drawings, some have been cad drawings and some have been photographs — all trying to show the same design. But you can't really show the same detail in a line drawing, a cad drawing and a photograph. There's always going to be a bit more or a bit less in each of those different things which can sort of raise the question of whether or not there are, there's more than one design in the application. And again it can make it a little bit unclear about what's being applied for.
Design's claiming indefinite dimensions must show those dimensions in a clear and readily understandable manner. Again, we've had most applications that show indefinite, the claim in definite dimensions are great, and they show it really clearly. We do have, we have had some where people have gone out for some very strange and difficult to understand methods of trying to show indefinite length. So, we want those to be to be clear so everyone can see that the design applied for is for indefinite length or indefinite dimensions.
And the last one on here is where representations include unclear labelling, we can require that appropriate labelling be added. So this might be if a cross-sectional view has been provided and it's not clear where it's come from, or it's not clear that it is a cross-section view, we can require that that be labelled to indicate what it actually is.
Craig:
Sorry make sure everyone can hear me. I've got a question here. “Do design drawings need to be labelled with views? So front views, rear views?” Look it's very helpful for us. We definitely want that type of information so that we can be certain that we're doing the right job in registering the design and ensuring that the design that you've applied for and the fees you paid match up. So you know, if you paid for one design we can be sure that the representations show one design. And also it helps when these designs are registered publicly that people can understand the scope of the registration that we have.
So it's certainly information that we absolutely encourage and where we are unsure about what a representation shows and we don't have labelling, we will ask you to provide something so that we can understand what you're trying to show us in the representation and we can be sure that we've got that it shows the design being applied for and that the representations match the fees that you paid, and your intention to file one design or more than one design, for a common design, the options that you have at that stage.
Derek:
Thanks Craig. And that's me pretty well done with this part. So if you do have any more questions um again there's a bunch of information on our website in our examiner's manual and there's also a link there to the official journal of designs should you want to go to see that. So if you can pop any more questions you have into the chat uh we'll just mute for a minute or two, give people a chance to put their questions in. And I believe Veronica has a little bit more to say and then we'll come back and answer some questions.
Veronica:
Sure. I just wanted to remind everyone we do have our customer service number. We’ve popped the number in the chat so if there's any questions that come out after our webinar, you can always give them a call. We are going to email out a recording of the presentation. We'll probably do that without a day or two.
Derek we already have a question. “Do design drawings need to be labelled with views? I.e. front view, rear view etc.” So I think that's very similar to the question Craig just answered.
Craig:
Yes. I’m happy to answer that again. So yes. It is very helpful for us. So when we are looking at an application for a design and we're doing the formalities assessment on it, we want to make sure that the representations match the number of designs being applied for. So if you're applying for one design, we want to make sure that representations show one design. Labelling helps us to make sure we understand the scope of the design you're coming for. And if we don't have labelling and we look at a representation, we're unsure of what it's trying to show or what type of view — whether it's a side view, [indecipherable] not necessarily exploiting view, side view, front view — we’ll ask you to provide it if there's uncertainty about what you've applied for. Absolutely.
Veronica:
Great um and we have another question. “Do disclosures after the priority date impact the assessment of the newness and the distinctiveness of the design?”
Craig:
So in terms of relying on the grace period, we, it will because we're unable to take into account disclosures made after the immediately after the priority date. But what we're talking about, if you're talking about generally how we go about examining, we're obviously worried about [indecipherable] so and that's obviously before the priority date in terms of that are too similar to the registered design standard examination.
Veronica:
Yeah great. I don't think we have any other questions so we might just end the presentation here. But as I mentioned earlier, you can always give us a call or shoot us an email or contact us on any of our social channels. So thank you so much to everyone uh for joining us today and we hope you enjoyed the presentation. Thank you.