Upon or after filing a design application, an applicant may currently request either publication or registration of the design. A design application lapses if a request is not made within the prescribed period, which is typically six months from the priority date. The option of publication was provided as a way for applicants to make a design public and thereby prevent others from obtaining certification for the same design.
However, to date very few applicants have requested publication. The option of publication complicates the designs system. Also, requiring applicants to request registration imposes an administrative burden on the great majority of applicants and can result in the unintended lapsing of applications.
In its 2015 'Review of the Designs System' in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended (Recommendation 9) the automatic publication of designs at six months after the filing date, with the possibility to request publication earlier if desired. An amendment to the innocent infringer defence, in subsection 75(2) of the Designs Act 2003, would accommodate this change.
The Australian Government noted the recommendation in its response to ACIP in May 2016, and committed IP Australia to carrying out further consultation.
On hold 04-Sept-2017
Policy Development 01-Jul-2019
Consultation 31-Oct-2019 to 20-Dec-2019
Policy development 20-Dec-2019 to 12-May-2020
Legislative drafting 12-May-2020 to 02-Dec-2020
In Parliament 02-Dec-2020
Public consultation on this issue first took place from November 2016 - February 2017.
From 23 July 2020 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.
As a result of our 2019 consultation, removing the publication option and introducing automatic registration of the design after 6 months from the filing date will be progressed as well as amendment to the innocent infringer defence.
These issues are included in the Designs Bill which was introduced into the Senate on 2 December 2020. The Bill is currently before Parliament for consideration.