In its 2015 'Review of the Designs System' in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended (Recommendation 12) the introduction of a grace period of six months before the filing date, together with a prior user defence. The government accepted the recommendation in May 2016, noting the length of the grace period and requirement for an applicant to declare any disclosures at the time of filing will be determined at a later stage following further stakeholder consultation and development of international norms.
Currently under section 15 of the Designs Act 2003 a design is registrable if it is new and distinctive when compared to the prior art base for the design as it existed before the priority date of the design. The prior art base for a design consists of designs publicly used in Australia and designs published in a document within or outside Australia.
As a result, if a person, through ignorance or inadvertence, publishes their design before seeking legal protection, the design will not be able to be validly registered because the publishing becomes part of the prior use base. This limits the ability of the designer to test the commercial worth of a design for a limited time prior to submitting an application (for example, showing prototypes at trade shows).
Policy development 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 (with modifications to allow for a 12-month grace period) is included in the Designs Bill which was introduced into the Senate on 2 December 2020. The Bill is currently before Parliament for consideration.
IP Australia has previously received a submission on this issue to the Policy Register. The submission and IP Australia’s response are published on the Policy Register submissions page.