Implementing accepted recommendations from ACIP’s Review of the Designs System

Closed 20 Dec 2019

Opened 31 Oct 2019

Results Updated 11 May 2020

A response to this consultation detailing the outcomes and reasoning is now available.

Thank you to all who contributed and provided submissions to our consultation. Based on stakeholder responses and other feedback, IP Australia is proceeding with a number of proposals with the view of releasing an exposure draft of the proposed Bill and supporting regulations in the second half of 2020. These proposals are listed below:

  1. Introduce a grace period with prior use defence
  2. Registration of designs – removal of publication option
  3. Remove liability for infringement before registration
  4. Give exclusive licensees legal standing to sue for infringement
  5. A number of technical improvements

Submissions received:

We received the following 15 non-confidential submissions:

Overview

From 31 October to 20 December 2019 we sought your views on policy issues that would implement accepted recommendations from the former Advisory Council on Intellectual Property’s (ACIP) Review of the Designs System. This consultation has now closed. IP Australia is also undertaking a more holistic review of the designs ecosystem, as part of the Designs Review Project.

ACIP’s 2015 Report outlined that the Designs Act 2003 currently provides limited flexibility, clarity and limited scope of protection for designs. This may be creating unnecessary barriers for designers when they are innovating and commercialising their designs.

Why We Are Consulting

You can watch a quick video overview of the issues covered in this consultation, or read about them below under these three key topics:

1. Examining the scope of design protection

  • The protection of partial designs and considers whether IP protection for only part of a product should be allowed.
  • The protection of virtual, non-physical and active state designs and considers whether IP protection of new types of designs (including screen displays, screen icons and graphical user interfaces (GUIs)) should be allowed.
  • The approach taken in section 19 of the Designs Act, when assessing whether a design is distinctive enough when compared to another design.

2. Early flexibility for designers

  • Introducing a safety net (grace period) to avoid public disclosures made by a designer from prejudicing a later filed application for design protection in Australia.
  • Allowing designers to delay publication of applications for design protection, so that their design can be kept secret for longer (for example, until it is ready to be launched in the market).
  • Removing the rarely used option for designers to only publish a design application (and not register it).

3. Simplifying and clarifying the designs system

  • Several technical proposals seeking to simplify the designs system for users and clarify parts of the system that may be confusing, including possible changes to the terminology used in the Designs Act.

What Happens Next

We are currently developing an exposure draft of the proposed Bill and supporting regulations. IP Australia intends to release these drafts for public comment in the second half of this year.

If you have any questions about this consultation, you can email consultation@ipaustralia.gov.au.

You can subscribe to our What’s New mailing list to stay up to date as our work progresses.

Areas

  • All Areas

Audiences

  • Innovators/Business
  • IP attorney profession
  • Government
  • Applicants/Rights holders

Interests

  • Designs