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

Overview

We are seeking 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

The proposed legislative package aims to deliver early benefits to designers. In parallel, IP Australia is working on a new online filing system to make the application process smoother, improving access to information on our website, and investigating further reform measures resulting from exploratory research into the design economy and the role of the design rights system (see Design Review Project). You can read more about IP Australia’s other design initiatives here.

Background

The release of the draft legislation follows 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 which will not be progressing 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 We Are Consulting

We are seeking 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.

Please note that the draft explanatory material is still being developed and is intended only as a guide to assist with the interpretation of the draft legislation. IP Australia will undertake further editorial review and finalise the text when a final version of the legislation is settled. 

What Happens Next

We will closely consider all submissions received, which will help us in finalising the legislation. We will publish our response to your submissions which will include the outcomes of the consultation.

Subject to government priorities, IP Australia is seeking to introduce the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 to Parliament in late 2020.