Policy ID: 
45
Status: 
On hold
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:

  1. That rules regarding the identity of Convention applicants be made consistent with rules relating to designs;
  2. 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;
  3. 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);
  4. 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.
  5. The ground of revocation on the basis of fraud, false suggestion or misrepresentation should extend to fraud, for example, during certification (not just registration); and
  6. The opportunity to amend should be broadened to allow for amendment other than to overcome a ground of revocation.

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
Comments: 

Issue to be considered in future. Other matters of higher priority will be considered first.

NOTE: 18(b) from this recommendation is covered under issue 46 (exclusive licensees for designs).

Tag: 
ACIP
Designs