ACIP Designs Review recommendations 18a, 18c to 18g (technical issues).

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);
• That design registrations should be revocable on the basis of a lack of entitlement at the time of the revocation proceeding (rather than at the time of registration) (Rec 18d);
• The prior art base against which newness and distinctiveness is considered should be expanded to include designs for products other than the product the subject of the registered design (Rec 18e);
• 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); and
• The opportunity to amend should be broadened to allow for amendment other than to overcome a ground of revocation (Rec 18g).

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).