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

Response 64829738

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Shelston IP

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Survey on the draft legislation

1. Do you have any comments on the drafting of Schedule 1 and 2 which introduces a twelve month grace period and an infringement exemption for prior use during that period?

Do you have any comments on the drafting of Schedule 1 and 2 which introduces a twelve month grace period and an infringement exemption for prior use during that period?
Grace Period – Schedule 1

Shelston IP appreciate the introduction of a twelve-month grace period for design applications, and further, the clarification that the grace period will run from the ‘priority date’ rather than the ‘filing date’ mentioned in IP Australia’s earlier proposals.

Shelston IP do have concerns, however, regarding the proposed exclusions to the proposed grace period by publications made by foreign and local patent/design offices agencies.

It is our understanding that the new grace period provisions are intended to mirror similar provisions available under patent law and those available in foreign jurisdictions. However, we believe the proposed exclusions introduce significant differences with parallel laws and may result in substantial confusion. One unintended consequence of these exclusions may be that designers will make deliberate decisions to rely on the grace period and forgo an earlier filing date. This is clearly in contrast to the intention to introduce a general grace period to help protect designers from losing their rights through inadvertent disclosure, as stated on page 6 of the Draft Explanatory Memorandum.

Prior use defense – Schedule 2

Shelston IP welcomes the introduction on an exemption from infringement of a registered design by reason of prior use in Australia so as to reduce any advantage by applicants who avail themselves of the new grace period provisions.


2. Do you have any comments on the drafting of Schedule 3 which amends the Designs Act to streamline the design registration process?

Do you have any comments on the drafting of Schedule 3 amends the Designs Act to streamline the design registration process?
Shelston IP welcome the automatic registration of a design after six months and agree that these new provisions will reduce the number of deadlines to be monitored and minimise the possibility of the inadvertent lapsing of an application where an applicant merely intended to delay in registration.

Shelston IP also welcome the repealing of the publication only option, which was is potentially confusing especially to applicants who are not represented.

4. Do you have any comments on the drafting of Schedule 5 which will amend the Designs Act to streamline the process for updating formal requirements for a design application?

Do you have any comments on the drafting of Schedule 6 which will amend the Designs Act to streamline the process for updating formal requirements for a design application?
Shelston IP welcome these changes.

5. Do you have any comments on the drafting of Schedule 6 which contain amendments to make minor technical corrections and improvements to the Designs Act?

Do you have any comments on the drafting of Schedule 7 which contain amendments to make minor technical corrections and improvements to the Designs Act?
Shelston IP welcome the certainty provided by confirming the Multisteps approach to the informed user standard, particularly clarifying that the standard is that of a person familiar with the product rather than being limited to an actual user of the product.

Shelston IP also welcome the clarification that a design registration remains in force during the 6-month renewal grace period subject to the renewal being paid before the end of the grace period.

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?
Shelston IP believes that this expression should cover any predecessors in title where the right has had more than two owners.

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?
This publication should be covered by the proposed grace period, subject to there being clear entitlement connection between the publisher of the design and the owner of the filed application.

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 will ensure that two (or more) design registrations having different priority dates, but covering the same design, will not both be registrable.

However, one potential consequence of the Registrar's exclusion is that it may discourage designers from filing for an earlier iteration of a design with the option of following up later on with a final more developed version. In this regard, whilst it is understood that the grace period would still protect designers against any early public disclosure, the proposed exclusions may result in designers adopting filing strategies that may not adequately cover each interation of a design.

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?
The proposed amendment to ensure that a request for regisration is deemed to have been made should be a positive change and prevent applications lapsing unintentionally. One consequence will be that all designs will be published, unless withdrawn. However, the vast majority of applicants would be aware that their design will ultimately be published at the time of filing the application, so on balance the proposed change would appear to favour most situations.