Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020

Closed 28 Aug 2020

Opened 23 Jul 2020

Results updated 17 Sep 2021

The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent on 10 September 2021, after passing through Parliament on 30 August 2021. Changes to clarify the legal standard used to assess design infringement and registration, and the circumstances in which a design can be revoked come into effect as of 11 September 2021, while the remainder of the Act commences on 10 March 2022.

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

Thank you for your contributions and submissions to this consultation. 

Your feedback informed further development of the Bill prior to its consideration by Parliament. In addition to commenting on the Bill, some submissions expressed  interest in further policy changes that would enable a broader section of the design economy to benefit from a design right in Australia. While such policy changes are beyond the remit of this Bill, these suggestions are being considered under IP Australia’s broader designs reform work.

Published responses

View submitted responses where consent has been given to publish the response.

Overview

From 23 July 2020 to 28 August 2020 we sought your views on an exposure draft of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 and the Designs Amendment (Advisory Council on Intellectual Property Response) Regulations 2020 (collectively the ‘draft legislation’) along with the accompanying draft Explanatory Memorandum and draft Explanatory Statement (collectively the ‘explanatory material’). Explanatory material accompanies legislation to assist with the reading and interpretation.

The following proposals are included in the draft legislation:

  • Introducing a 12 month grace period to help protect designers from losing their rights through inadvertent disclosures made prior to filing.
  • Expanding the existing limited prior use defence to protect third parties who started preparations to make a design before someone else tried to register it.
  • Simplifying the design registration process by removing the publication option and making registration automatic six months after filing
  • Aligning with the other IP Rights by giving exclusive licensees legal standing to sue for infringement
  • Making several technical improvements to the Designs Act

Background

The release of the draft legislation followed our consultation, which took place from 31 October to 20 December 2019, on recommendations accepted by the Government from the former Advisory Council on Intellectual Property’s (ACIP) Review of the Designs System.

Thank you to all who took the time to provide us with their views. On 11 May 2020 we released our response to the consultation, which summarised submissions and gave our reasoning on which proposals would be included in the draft legislation.

The earlier consultation included a number of other proposals that were not progressed in this legislative package. These proposals remain on IP Australia’s Policy Register and if you wish to provide a submission on the issues, we invite you to do so via the Policy Register:

  • Protection of partial designs - Policy ID 42
  • Protection of virtual, non-physical and active state designs - Policy ID 43
  • Clarify ambiguity in section 19 of the Designs Act - Policy ID 35 
    Please note the part of this proposal relating to the standard of the informed user will be progressing and is included in the draft legislation
  • Clarification of ‘registered’ and ‘certified’ designs - Policy ID 37
  • Some of the amendments proposed in Recommendation 18 of the ACIP Designs Review (18b, 18d, 18e and 18g are not progressing at this time) - Policy ID 45

Why your views matter

From 23 July 2020 to 28 August 2020, we sought comments on the draft legislation, in particular on any unintended consequences of this legislation or issues with the drafting, rather than on the policy that underpins the amendments as this has already been agreed to by the Government.

What happens next

IP Australia is progressing a suite of designs reforms built from the findings of the 2019/2020 review of Australia’s design ecosystem. We continue to explore and consult with the community as reforms progress.

You can read more about IP Australia’s other design initiatives here.

Audiences

  • Innovators/Business
  • IP attorney profession
  • Applicants/Rights holders
  • Thought leaders

Interests

  • Designs