Policy ID: 
45
Status: 
Legislative drafting
Priority: 
Medium
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);
  • 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).

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

Comments: 

From 23 July to 28 August 2020 IP Australia consulted on an exposure draft of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Designs Bill) and the Designs Amendment (Advisory Council on Intellectual Property Response) Regulations 2020 along with the accompanying draft explanatory memorandum and draft explanatory statement.

The submitted responses and our response have been published on our Consultation Hub.

The Designs Bill aims to deliver early benefits to designers as part of a broad range of design reforms and initiatives being undertaken by IP Australia.

Further initiatives are being considered under the Designs Reform Project which is founded on a holistic review of the design ecosystem and its impact on the Australian economy.  We will continue to engage with stakeholders on this work.

Prior to the consultation on the exposure draft of the Designs Bill, we conducted a public consultation from 31 October to 20 December 2019 on the policy issues being considered for inclusion in the Designs Bill.

The submissions received during the consultation along with our response to those submissions are available on our Consultation Hub.

As a result of our 2019 consultation, only the following parts of this proposal will be progressed in a 2020 Designs Bill, subject to Government priorities:

  • Recommendation 18(a)
  • Recommendation 18(c)
  • Recommendation 18(f)
  • Recommendation 18(g)

Our reasoning  can be found in our response to the consultation.

If you wish to provide us with further feedback on the issue, we invite you to use the form below.

Tag: 
ACIP
Designs
101