Australian Designs Act received new fundamental changes
The IP Office of Australia has recently announced that there will be some major changes to the Australian Designs Act. This change will improve the registered designs system, accelerating the entire process of handling IP matters in Australia. Most of the changes will begin on 10 March 2022.
One of the most prominent changes is the inclusion of a grace period. Previously, a design must be kept a secret to the public, i.e. it must not be opened for the public in order to keep it ‘new and distinctive.’ With this new change, designers will now have the option of publicly sharing their designs for 12 months, without affecting their ability to file for design protection before applying for protection of said designs.
Even if the design was made public, the applicant can still file for protection during the grace period if the original disclosure of the design was by:
- The designer or designers;
- The owner of the design where this is someone other than the designer (e.g. an employer, or a successor in title);
- A party authorized by the designer or design owner;
- A party obtained the design from the designer or design owner without their permission (stolen, thief, blackmail, etc.).
Publications of designs by the following aren’t eligible for the grace period:
- The Registrar of Designs.
- Foreign and international designs offices.
Change to the design registration process
Another important change is the design registration process. Designs filed on or after the date of March 10, 2022, will automatically go through a formality check 6 months after the application’s priority date. This means that the design will automatically be registered 6 months after applying. This simplifies the process as a request for registration is no longer obligated.
These improvements are part of IP Australia’s ongoing program of design initiatives. Before the end of 2021, new formal requirements for design applicants and consultation on a draft determination of these requirements will be held to further clarify the regulations and provisions set in these changes.
Expert opinions
Robert Munro, senior associate at Allens in Melbourne stated the inclusion of a grace period for designs is a welcome move: “The amendment will ensure consistency with other jurisdictions where a similar grace period of 12 months also exists such as in the US and Canada. The grace period provisions will hopefully save some heartache for clients who inadvertently disclose their design before seeking registration, as frequently occurs in the case of multijurisdictional clients who do not always fully appreciate the consequences of disclosing their design prior to the filing date.”
Nonetheless, Munro added that ultimately, the introduction of a grace period provision should not be understood that there will be no problem if the designer discloses their design to the public. Rather, it should be interpreted that this change establishes a safeguard if the designers accidentally disclose their design, and accordingly, it is still best practice to file a design application before the design is disclosed.
Munro’s colleague Rob Vienet, an associate at Allens, also added: “If considered in isolation, the grace period provisions would have the undesirable consequence of permitting designers to test the market before they seek registration of their design. However, it ought to be remembered that the grace period provisions will be tempered by other provisions. Notably, the grace period will be counterbalanced with a prior use defense which will protect third parties from infringement claims if the third party begins to use a design, or a substantially similar design, before the design’s priority date. This means that the third party will be able to continue using the design despite a valid design being registered by the original owner. This reinforces the best practice of filing a design application before it is disclosed.”
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