Designs are a Change – What You Need to Know About Changes to Designs Law 2003 – Intellectual Property
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The Design Amendment Act 2021 (Intellectual Property Response Advisory Council) (Cth) received Royal Assent on September 10, 2021 and introduced key changes to designs law in Australia. In particular, a 12-month “grace period” will be introduced, which protects applicants who use or publish their design prior to filing. The majority of changes begin on March 10, 2022, and below we go into detail about the main changes and what you need to know.
12 month grace period
Key change: the introduction of a 12-month grace period aligns the Australian design system with the patent system. The change means that Australian design applicants can file their design application within 12 months of use or publication, without affecting the “new and distinctive” requirement.
While a grace period is standard practice internationally and already applies to patents in Australia, the Australian Designs Act is behind schedule. This is a welcome change for applicants, many of whom may have assumed the grace period existed and unknowingly compromised their application through use or publication.
What does that mean: As of March 10, 2022, the grace period will allow designers to test their design in the marketplace, before committing to protect the design against other forms of protection such as copyright, and before that the products are not applied industrially. Importantly for foreign applicants, although the grace period applies from the priority date, there are some exceptions, such as publication of the design by foreign design offices abroad, it will therefore be important to claim priority.
Exemption from counterfeiting – prior use
Key change: a new infringement exemption will be introduced to protect third parties against infringement if they use a design after disclosure, but before an application for that design has been filed. This comes on the back of the newly introduced grace period, in an effort to balance the rights of designers and third parties.
What does that mean: a designer may disclose his design during the grace period, but a third party may not know that he intends to file an application for registration of the design. If the third party begins to use, manufacture, import or sell the product before the filing date, it will be exempt from registered design infringement during this period.
Defense for innocent infringement
Key change: an innocent infringement defense is currently available under the Designs Act, when a third party was unaware or could not reasonably have known that a design is registered. This defense will be broadened to include the period of time between the date of filing of the design and registration, when the design is not published on the register and available to the public for research.
What does that mean: a successful application of this defense may result in a denial of damages, a reduction of damages awarded, or a denial of a profit account, in respect of an infringement that occurred before the date registration of the design.
Key change: an exclusive licensee who has licensed all rights in Australia to a design will now have standing to initiate infringement proceedings and assert his rights. However, the license holder must make the registered owner of the design a defendant in the proceedings, unless the registered owner is a joint applicant.
What does that mean: as the person who exploits and uses the design, this aligns the rights of licensees under the Designs Act with those of trademarks and patents.
Remove the publish option
Key change: From March 10, 2022, we will also see the removal of the less commonly used option to publish a design without registration (often used to place the design in the prior art).
What does that mean: in the future, if registration is not requested at the time of filing, the design application will be automatically registered after six months, unless the applicant expressly withdraws the application. A design request will also be kept confidential until registration occurs.
We will also see changes to:
- Formal requirements: the process for updating formal requirements will be improved so that the Registrar can easily change what needs to be included in an application and how the drawings are presented. It’s about adapting the rules to new technologies, as they continue to develop for designs.
- Standard of the informed user: this has now been changed from “informed user” to “familiar person”, when examining whether the designs are substantially similar in the overall impression. The change will eliminate the need to be a “user” of the design and should reduce the costs of expert witnesses in infringement cases.
- Revocation of registration: this amendment clarifies the grounds for revocation, including expressly acts of fraud, false suggestion or misrepresentation, and that they apply both at the stage of registration and examination of the design.
- Renewal of registration status: this amendment clarifies that during the six-month renewal period available for payment, registration will not cease.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.