The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Act) has now come into force.
In broad terms, the Act 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 Act include the following:
Grace Period
Importantly, the Act 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 now allows the valid filing of design applications up to 12 months after the design is first made publicly available. We are confident that this change will provide significant benefit to many design applicants. 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 Act 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 Scrapped
Many design applicants and practitioners will be aware of the current need to request registration or publication for all design applications. The option of requesting publication was so little used that it has been scrapped entirely.
Exclusive Licensees to Bring Infringement Proceedings
The Act now provides standing for exclusive licensees to bring infringement proceedings.
“Informed User” Test to Change
The Act also abandons the “the standard of the informed user” test and instead adopts the “standard of the familiar person” test. It will be interesting to see what practical effect this has on both substantive examination and enforcing design registrations.
