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Design rights shift in Australia

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In early 2019, IP Australia initiated a comprehensive research phase exploring Australia’s design ecosystem, including voices from the industry, design forums, economic analysis and business surveys. Following this 12-month exercise, the regulator has proposed the following changes:

  • A new 12-month grace period with a prior use defence for third parties. The grace period will protect designers against self-disclosure prior to filing a registered design. Another benefit includes allowing designers to test products in the market before filing designs and making strategic design filing decisions.

  • Legislating the ‘informed user’ standard based on the Multisteps approach. In the Multisteps decision, Justice Yates decided that the ‘informed user’ need not be a user of the product. IP Australia will revise designs legislation to reflect this change.

  • Remove the publication option (but not introduce a formal publication deferral mechanism). Removing the option of publication simplifies the registration process. IP Australia also proposes that registration requests be made automatically, six months from application filing. For overseas applicants filing design applications in Australia (i.e. up to six months after an original (Convention priority) filing), we expect that the six-month period will be deemed elapsed. Publication will therefore automatically occur when the Australian design registers (which currently occurs a few weeks after filing).

  • Moving formality requirements from the Design Regulations to a non-legislative instrument allowing for greater flexibility in updating these requirements. This includes for example, requirements for fitness of reproduction, separate sheets, margins, textual matter, photographs, electronic documents and scandalous matter.

IP Australia has deferred (or will not yet implement) the following suggestions:

  • Protection for virtual designs – Virtual designs include screen displays, graphical user interfaces (GUIs), and screen icons. Currently, a virtual design is not enforceable as it is not considered to be in respect of a product. Submissions were made that virtual designs do distinguish products, and that there is a significant amount of economic activity in the virtual space, thereby warranting their protection. In our opinion, the decision to not allow virtual designs protection is short-sighted and ignores a significant field of economic endeavour.

  • Protection for partial designs – Protection for partial designs would enable protection of a product’s ‘signature features’. In practice, different drafting techniques are used to convey relative significance of features, such as dotted lines, shading and solid lines, as well as a Statement of Newness and Distinctiveness that emphasises a product’s unique features. Nevertheless, the representations are interpreted in the context of the whole design. The decision to defer protection for partial designs means applicants will continue utilising contrived ways to achieve some form of protection for partial designs.

  • Formal publication deferment option – There is currently no formal mechanism to defer publication. To delay publication, applicants often deliberately trigger formalities objections (i.e. to delay publication of the design by about three to four months). Submissions strongly supported a deferred publication option. However, in combination with the introduction of a 12-month grace period, IP Australia believes that this introduces an extended period of market uncertainty, in addition to a more complicated publication scheme.

  • No changes to weighting factors of Section 19(2) of the Designs Act. The weighting factors assist in assessing newness and distinctiveness. IP Australia considers that any further clarification of the factors may complicate matters and deprive examiners and judges of the flexibility required to resolve issues.

  • Clarification of ‘registered’ and ‘certified’ designs to address confusion surrounding the terms. IP Australia does not consider that changing the terminology necessarily addresses the issue of confusion, especially for people unfamiliar with the design rights system. Thus, uncertainty will continue to prevail for users of the design rights system regarding whether a registered design is enforceable.

  • Statement of Newness and Distinctiveness will not be required and remains optional.

In the short term, IP Australia will focus on drafting a Designs Bill to implement the changes arising from the Advisory Council on Intellectual Property (ACIP) report and public consultation. Despite some missed opportunities arising from the review, implementing the grace period will have real benefit for designers. In the long term, IP Australia intends to explore further reform measures for the design rights system.

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