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
We are currently consulting on an exposure draft of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 and the Designs Amendment (Advisory Council on Intellectual Property Response) Regulations 2020 along with the accompanying draft Explanatory Memorandum and draft Explanatory Statement.
Consultation closes on 28 August 2020.
We conducted a public consultation from 31 October to 20 December 2019 on policy issues being considered for inclusion in a Designs Bill in 2020. IP Australia has published the submissions received during consultation along with our response to those submissions.
This issue will be included in the Designs Bill in 2020, subject to government priorities. Our reasoning and further details can be found in our response to the consultation.
IP Australia is investigating further reform measures resulting from exploratory research into the design economy (see Design Reform Project).
See also item 19.