On 30 August 2021, The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Bill) was passed by the Australian Parliament. Amongst other changes the Bill effects to the Designs Act 2003 (the Designs Act), it finally introduces into Australian law a “grace period” for applicants, bringing the law in line with other jurisdictions which allow such a grace period.
While Australian patent applicants have had the benefit of a grace period since the early 2000’s, no such benefit has previously been afforded to applicants for design registration. In particular, international applicants filing in Australia have been vulnerable to self-invalidating Australian design applications by assuming they had the benefit of such grace period.
The Bill introduces other key amendments to the Designs Act and is the outcome of recommendations by the Advisory Council on Intellectual Property’s review of the Australian designs system.
There are 7 schedules in the Bill, which introduce the following amendments:
Schedules 1-6 and Schedule 7 Part 3 will commence 6 months after the Bill receives the Royal Assent. Schedule 7 Parts 1 and 2 will commence the day after the Bill receives the Royal Assent.
We discuss some of the key amendments in further detail below.
Schedule 1 introduces a 12-month grace period for filing a design application to protect designers who disclose their design before filing for protection.
A design must be filed within 12 months of disclosure to receive these benefits.
A person can file for protection during the grace period if the original disclosure of the design was by:
Certain publication of designs aren’t eligible for the grace period, namely by the Registrar of Designs, or foreign and international designs offices.
Schedule 2 introduces an exemption to protect third parties from infringing someone else’s design. However, this only applies if the third party starts using a design before the priority date of a registered design, whether such use was as a result of the design being independently created, or if it was copied as a result of disclosure by the design owner before the priority date.
Schedule 2 also protects people who legally obtain products from a third party.
In such circumstances, a person will be able to continue to keep:
Schedule 4 expands the scope of the ‘innocent infringer’ defence. This defence prevents third parties being liable for infringing a design if they did not know the design was registered.
The amendment means that the defence now also applies to the period between the filing date of a design application and the date of registration (approx. 6 months). This is important because in this period, the design is not publicly available on the Register of Designs, so a search of the Register will not reveal that a design has been protected.
An innocent infringer must prove they did not know and had no reasonable way of knowing the design was protected.
In such cases where the defence is available, a court will now have the discretion to:
Schedule 5 gives exclusive licensees the right to bring infringement actions under the Designs Act without having to rely upon the owner of the design.
The design owner must still be given an opportunity to play a role in the action if they wish.