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

Response 53626268

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Introduction and Privacy Policy

2. Do you consent to having your submission published?

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Ticked Yes
Yes but I would like to remain anonymous
No

4. What is your name?

Name
Sarah Barclay

5. What is your organisation?

Organisation
AJ Park

7. What is your profession?

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Australian designer
Overseas designer
Ticked IP Attorney/Lawyer
Academic
Industry representative
Other (please specify below)

Questions asked in the Explanatory Memorandum

1. In the new provisions, and in existing provisions, the expression “the registered owner’s predecessor in title” is used. Will this cover, as we intend, any predecessors in title where the right has had more than two owners?

In the new provisions, and in existing provisions, the expression “the registered owner’s predecessor in title” is used. Will this cover, as we intend, any predecessors in title where the right has had more than two owners?
Yes.

2. Under s 13(1)(b), where a person creates a design in the course of employment, or under a contract with another person, the person entitled to registration is the employer or the other person under the contract. If the employee/contractor designer were to publish or use the design, would that disclosure be covered by the grace period, either by treating the designer as a “predecessor in title”, or under doctrines of agency, or otherwise? If not, is this a problem?

Under s 13(1)(b), where a person creates a design in the course of employment, or under a contract with another person, the person entitled to registration is the employer or the other person under the contract. If the employee/contractor designer were to publish or use the design, would that disclosure be covered by the grace period, either by treating the designer as a “predecessor in title”, or under doctrines of agency, or otherwise? If not, is this a problem?
It is a problem if disclosure by the employee/contractor is not covered by the grace period. The legislation should be clear so that any such disclosure is covered by the grace period. One option would be to refer to the designer(s).

3. Does the proposed exclusion of the Registrar’s publications (in combination with the language of the remainder of the subsection) ensure that two design registrations with different priority dates but covering the same design will not both be registrable? Will it have any unintended consequences?

Does the proposed exclusion of the Registrar’s publications (in combination with the language of the remainder of the subsection) ensure that two design registrations with different priority dates but covering the same design will not both be registrable? Will it have any unintended consequences?
Yes, this is appropriate. The new legislation should ensure that whole contents publications are still part of the prior art base, as currently defined in 15(2)(c).

5. Will the subsection effectively simplify proof of derivation for registered owners of designs? Does it strike an appropriate balance between facilitating proof for registered owners and permitting rebuttal by third parties? Are there any unintended consequences, or gaps in proof for registered owners?

Will the subsection effectively simplify proof of derivation for registered owners of designs? Does it strike an appropriate balance between facilitating proof for registered owners and permitting rebuttal by third parties? Are there any unintended consequences, or gaps in proof for registered owners?
Yes, this is appropriate because it requires identical, or substantially similar in overall impression, designs.

6. Does subsection 17(1C) satisfactorily address the relationship between section 17 and section 18?

Does subsection 17(1C) satisfactorily address the relationship between section 17 and section 18?
We agree that use that is to be disregarded because of subsection 17(1) must also be disregarded for the purposes of section 18.

7. We recognise that the amendments made by Schedule 2 do not provide relief from infringement for third parties for potential infringement that may occur between the filing and registration of a design

One option under consideration is to amend the Designs Act to expand the options for relief where a third party begin using a design between filing and registration. Do you have any comments on this approach?
Expanding the options for relief where a third party begins using a design between filing and registration should be considered further. It should also be consistent with the approach taken for patents.

8. The concept of a “temporary” cessation is reused from the Patents Act s 119(2). Is the expression “temporary cessation” sufficiently clear? If not, what would be a better standard?

The concept of a “temporary” cessation is reused from the Patents Act s 119(2). Is the expression “temporary cessation” sufficiently clear? If not, what would be a better standard?
It seems sensible to be consistent with patent legislation.

9. The expression “derived the relevant design from the registered owner” is adapted from the Patents Act s 119(3), and reflects, to some extent, the standard used for the grace period in Schedule 1. Is the expression “derived the relevant design from the registered owner” sufficiently clear? If not, what would be a better standard?

The expression “derived the relevant design from the registered owner” is adapted from the Patents Act s 119(3), and reflects, to some extent, the standard used for the grace period in Schedule 1. Is the expression “derived the relevant design from the registered owner” sufficiently clear? If not, what would be a better standard?
It seems sensible to be consistent with patent legislation.

10. Subsection 71A(4) does not permit licensing of the prior use right (in a similar way to subsection 119(4) of the Patents Act). Some designers rely on third parties to manufacture, import, retail and distribute their products. Would the narrowness of subsection 71A(4) prevent use of ordinary supply or distribution chains by designers relying on the prior use defence? If so, how should the defence be modified?

Subsection 71A(4) does not permit licensing of the prior use right (in a similar way to subsection 119(4) of the Patents Act). Some designers rely on third parties to manufacture, import, retail and distribute their products. Would the narrowness of subsection 71A(4) prevent use of ordinary supply or distribution chains by designers relying on the prior use defence? If so, how should the defence be modified?
The legislation should be consistent with patent legislation. Also, it is not uncommon for a product to be covered by a patent and a design so the legislation should permit licensing of the prior use right in the same way for patents and designs.

11. Are there any unintended consequences or problems you foresee in applications being deemed to have requested registration?

Are there any unintended consequences or problems you foresee in applications being deemed to have requested registration?
This is a good approach.