The Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020 was introduced into Parliament on Wednesday, 2 December 2020.
In broad terms, the Bill is intended to provide greater flexibility for designers during the early stages of seeking design protection. It also seeks to clarify and simplify aspects of the designs system.
Some noted key features of the Amendment Bill include the following:
Grace period
Importantly, the Bill introduces a 12-month grace period. This is aimed at bringing the Australian designs system into closer alignment with many overseas jurisdictions, notably Europe and the US. The introduction of a grace period will allow the valid filing of design applications up to 12 months after the design is first publicly available. The introduction of a 12-month grace period will also bring the designs system into closer alignment with the Australian patent system, which already provides a 12-month grace period.
Infringement defence
In light of the introduction of a grace period, the Bill also introduces an infringement defence for any person who commences using a design during the grace period and before the design application is filed.
Request for publication to be scrapped
Many design applicants and practitioners will be aware of the current need to request either registration or publication for all design applications. The option of requesting publication is so little used that it will be scrapped entirely under the Bill. As such, all applications will, in effect, be an application for registration.
Abolishing the need to request registration removes an unnecessary administrative step. However, one potential downside is that applicants will no longer have the option of delaying the filing of a request for registration – which they may otherwise desire to do for commercial reasons.
Exclusive licensees to bring infringement proceedings
The Bill will provide standing for exclusive licensees to bring infringement proceedings.
“Informed User” test to change
While the Minister’s Second Reading speech in Parliament didn’t specifically refer to it, the Bill also proposes abandoning the “standard of the informed user” test and adopting the “standard of the familiar person” test. If this change is adopted, then it will be interesting to see what practical effect this has on both substantive examination and enforcing design registrations.
We will keep you informed of the progress of these proposed changes.
