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;
- 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;
- 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);
- 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.
- 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
- 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).
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).