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

Response 883269514

Back to Response listing

Introduction and Privacy Policy

2. Do you consent to having your submission published?

Please select one item
(Required)
Ticked Yes
Yes but I would like to remain anonymous
No

4. What is your name?

Name
Natalia Blecher

5. What is your organisation?

Organisation
Gilbert + Tobin

7. What is your profession?

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

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?
See attached letter.

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?
See attached letter.

3. Do you have any comments on the drafting of Schedule 4 which gives exclusive licensees of registered designs legal standing to commence legal action for infringement?

Do you have any comments on the drafting of Schedule 5 which gives exclusive licensees of registered designs legal standing to commence legal action for infringement?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.
If the options for relief from infringement were expanded, do you have any views on the standard of proof that is required to provide relief from infringement before or after registration?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

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?
See attached letter.

Survey on the draft regulations

1. Do you have any comments on the draft Regulations and/or the draft Explanatory Statement?

If so, please provide details below
See attached letter.