12 MONTH GRACE PERIOD TO BE INTRODUCED!!
IP Australia has recently released its response to public consultation on proposals put forward by the former Advisory Council on Intellectual Property’s review of the designs system.
The most significant advice to come from this response is IP Australia will proceed with introducing a grace period for registered designs. The grace period will be 12 months from the priority date.
We believe this a great step forward in Australian Designs law. Designers who inadvertently disclose their design prior to seeking design protection will now be protected.
In contrast, inventors have enjoyed a 12 month grace period under the Australian Patents Act for many years.
Many overseas countries, in particular Europe and the USA provide for a 12 month grace period in their designs law. This change will therefore also be good news for foreign design owners who have a validly filed a home design application but under present designs law cannot validly file in Australia due to a prior disclosure.
One important difference between the Patent grace period system and the proposed Design grace period system is that the Patent grace period is from the filing date in Australia and not the priority date.
In their response IP Australia considered that setting the designs grace period from the filing date in Australia “may be unfair to foreign applicants. Using the priority date avoids the situation where a foreign applicant may be denied protection because of a lack of knowledge of the Australian grace period system”.
Some of our foreign patent clients have indeed been in such a situation and have been denied patent protection in Australia for this very reason. We hope this may foreshadow a corresponding change to the Patent grace period system.
Other changes and no changes
Partial and virtual designs
A significant majority of submissions favored a proposal to protect partial (for example, the handle of a teacup on its own) and virtual designs (icons). However, IP Australia was not persuaded that a case for legislative change had been made “at this time”. However, they did indicate that such a change would continue to be considered
Publication and Registration
The publication option at the time of filing is to be removed. Requests for design registration will be automatically made at six months from filing. Currently, an applicant must formally request registration within six months from filing.
Whilst this change may streamline the registration process, it removes the option for a design applicant to request registration and certification at the time of filing so as to expedite receiving the protection of an enforceable right.
The Informed User
The current Designs Act requires the distinctiveness of a design and design infringement assessments to be made through the eyes of an ‘informed user’. This term has created uncertainty in litigation as to who is in fact an informed user. Does an expert witness have to actually use a product or simply be familiar with a product?.
IP Australia will proceed with revising the relevant subsection to clarify the standard of the informed user.
We believe this to be a welcome change. Such a change should also assist design applicants in examination where the applicant’s position on the standard of the informed user differs from that of the examiner.
The Way Forward
IP Australia are developing a draft of the legalisation for public comment in the second half of 2020.
We will keep you updated as to the progress of these changes.