Policy ID: 
45
Status: 
In Parliament
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); and
  • 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).

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 to 02-Dec-2020

In Parliament 02-Dec-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 the Designs Bill:

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

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

The Designs Bill was introduced into the Senate on 2 December 2020. The Bill is currently before Parliament for consideration.

See policy ID: 46 for implementation of Recommendation 18(h) and policy ID: 61 for Recommendation 18(i) through the Designs Bill.  

If you wish to provide us with further feedback on Recommendations 18(b), 18(d), 18(e) and 18(g) that were given low priority, we invite to refer to policy ID: 116 and use the form provided.

Tag: 
ACIP
Designs
101