IP legislation treats exclusive licensees of IP rights inconsistently when it comes to the ability to bring proceedings for infringement. In particular, exclusive licensees of patents, trade marks and copyrights have the right to bring proceedings for infringement under certain conditions. However, exclusive licensees of designs do not have the right to bring proceedings for infringement. This can cause problems for exclusive licensees of these rights when the owner of the right is unwilling or unable to enforce their rights, and can complicate licensing negotiations.
Amendment to the designs legislation would allow exclusive licensees of designs to bring proceedings for infringement of those rights. This was recommended for designs under recommendation 18h by the former Advisory Council on Intellectual Property in its 2015 review of the designs system. The government accepted this recommendation in May 2016.
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
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.
This issue will be included in the Designs Bill in 2020. Further details can be found in our response to the consultation.
IP Australia is also undertaking a more holistic review of the designs ecosystem, as part of the Designs Review Project.