In its 2015 'Review of the Designs System' in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended (Recommendation 18(h)) amendments be made to the Designs Act to give exclusive licensees of designs the right to bring proceedings for infringement of those rights. The government accepted this recommendation in May 2016.
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 plant breeder’s rights have the right to bring infringement proceedings under certain conditions. However, exclusive licensees of designs do not have legal standing 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.
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
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 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.
This issue is included in the Designs Bill which was introduced into the Senate on 2 December 2020. The Bill is currently before Parliament for consideration.
See also item 19 for further commentary on amending the scope of exclusive licensees under the Patents Act to clarify who can sue for infringement.