Grace Period Introduced for Australian Design Rights – Intellectual Property
Australia: Grace period introduced for Australian design rights
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The introduction of a 12 month grace period for designs in Australia will facilitate the coordination of the filing of Australian design applications in a broader international filing strategy, where there has been pre-filing disclosure .
A drawings Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was passed by Parliament on August 30, 2021, which, among other things, introduces the 12-month grace period for filing a design application in Australia. This grace period will have effect in Australia, but not in other jurisdictions, and therefore cannot remedy pre-filing disclosure for an applicant in another jurisdiction without similar provisions.
A design application in Australia must be filed within 12 months of disclosure to benefit from the grace period, and disclosure must have been made by:
- The creators) ;
- The owner (s) of the design when it is someone other than the designer;
- A party authorized by the designer or owner of the design; Where
- A party who obtained the design from the designer or design owner without their permission.
The publication of a drawing by an official design office is not eligible for the grace period.
The Australian design grace period will come into effect 6 months after the bill receives Royal Assent. The time it takes for a bill to receive Royal Assent is typically 7-10 business days, so it will likely come into force by mid-February 2022.
In order to balance the rights of design owners and third parties in light of the introduction of this grace period, the bill also introduces an infringement exemption which protects third parties against the infringement of a registered design. when they used it before its priority date.
This applies both to independent creation and to the case where the third party uses the design on the basis of the disclosure made by the owner of the design before the priority date.
As a result, it remains preferable to file a design application in Australia before any disclosure, or claiming priority under the Paris Convention, but the grace period will be available if necessary.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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