- In Designs
- 18 February 2022
Changes to the Australian Designs Act – Days of Grace are approaching …
The changes to the Australian Designs Act under the provisions of the Designs Amendment Act 2021 have been well reported. The most important change is the introduction of a 12 month grace period for registered designs. The grace period provisions will commence on 10 March 2022. As this date is fast approaching, we take this opportunity to revisit these changes from a designs practice perspective.
The grace period provisions allow for publication or use of a “subject design” to be disregarded when considering newness and distinctiveness of the subject design in the period ending 12 months before the priority date.
The qualification of the period being 12 months before the priority date is very different from that of the Patents Act that limits the 12 month period to before the filing date in Australia.
The publication or use is limited to publication or use that occurs on or after 11 March 2022. In practice, this excludes deferring filing a design application after 11 March 2022 as a strategy to enjoy the grace period.
The publication or use must be by a “relevant entity” or a person who derived or obtained the design from a relevant entity.
The grace period provisions do not apply to publication by the Australian Designs Office or equivalent foreign Designs Offices (discussed further below).
The subject design is the design for which registration has been sought. The design that has been prior published or used “may or may not be the subject design”. This allows for design protection for an improvement or modification of an unregistered design, that may otherwise fail the test for distinctiveness in view of the prior publication or use.
The relevant entity is defined broadly as the registered owner of the design, any predecessor in title to the design or the person who created the design. This appears to allow for a person who became entitled to the design after the creation thereof to enjoy the grace period provisions. This would allow, for example, the purchaser of a business that is using a design and/or published the design on the internet to validly file a design application within 12 months of that first use or publication.
Publications that are excluded from the Grace Period.
A publication by the Australian Designs Office or any equivalent foreign entity is specifically excluded from the grace period provisions.
Generally, for Australian applicants, the filing date in Australia is the priority date. Australian designs are generally registered and published within about eight weeks of filing but may be deferred for six months. The practical effect of this exclusion for Australian design owners is that they continue to be unable to obtain ongoing design protection for incremental improvements over a registered design.
The effect of this provision on foreign design applicants is much more significant. A foreign design applicant will have generally filed a priority design application in their home country. If the foreign applicant misses the six month convention deadline and if the priority design application or a family member has been published by a foreign designs office they will be unable to enjoy the grace period provisions and file a design application in Australia. This may be particularly relevant for UK and European priority applications, where registration and publication may occur relatively quickly.
In other words, there are inherent dangers in relying upon the 12 month grace period from the priority date to file a design application in Australia.
Infringement exemption for prior use
The Act also introduces a new defense for infringement for third parties who use another’s design before the priority date. The third party is free to continue to use the design after the design is registered. The commercial effect of a competitor being free to use a registered design may be significant.
The grace period enables a designer to still be able to obtain rights following inadvertent prior disclosure of the design. A common disclosure is a designer’s web site/social media page. Australian design examiners routinely conduct internet searches for such disclosures.
However, it is important to bear in mind that whilst the grace period may provide a safety net with respect to obtaining design registration, it should not be used as a filing strategy. Best practice is always to file a design application before any disclosure.