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).
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
IP Australia conducted a public consultation from 31 October to 20 December 2019 on policy issues being considered for inclusion in a Designs Bill in 2020. Consultation is now closed.
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 will not be progressing at this time, we invite you to use the form below.
IP Australia is investigating further reform measures resulting from exploratory research into the design economy (see Design Reform Project).