On 10 September 2021, Royal Asset was given to the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2021 (Cth). The Bill introduced changes to the existing Designs Act 2003 which impacts existing and new design rights. While many of the changes will not take effect until 10 March 2022, other changes are already active as of 11 September 2021.
Changes that are already in effect include that design registration can now be revoked if misrepresentation, fraud or false suggestion were involved in securing the design registration rights. The other change already in force relates to the definition of the “informed user” used during court and hearing proceedings and examination. The meaning of “informed user” has been unclear but it has now been defined as “any person who is familiar with the product, or products similar to the product”[1]. These immediate changes have implications for what should or should not be included in design applications which we can advise on as needed.
While these changes commenced on 11 September 2021, most of the changes will only take effect 10 March 2022 which include the following:
Grace Period
- Those who divulge their design prior to filing for protection will be granted a 12-month grace period within which they may still apply for protection.
Third Party Protection
- Third parties that begin using a design before the designer files for protection will be protected against infringing the design. This reflects fair treatment of designers and third parties where a designer divulges a design to a third party prior to filing for design protection.
- Third parties will also be protected against infringing a design if they use the design before the design is registered, granting a further 6 months of protection for third parties from the filing date of the design application to the date of registration. However, the third party must show evidence that it was not possible for them to know that the design was protected.
Publication
- The option to publish a design before obtaining registration has been available to designers, but on 10 March 2022 this will cease to be an option.
Exclusive Licensee Rights
- Third parties that obtain an exclusive license to the design will now be given rights to claim that a different entity has infringed the design. An exclusive license means that no one has rights to the design except that third party, even the owner of the design.
Formal Requirements
- Changes will be made to the way in which the Registrar of Designs can alter requirements relating to the presentation of drawings and what must be included in a design application. The change means that it will be easier for the Registrar of Designs to alter these requirements.
While many of these changes have minor administrative implications, others are more significant. If you would like further information about how these changes may impact your current or future design rights, please get in contact with us.
For the full report, see here.
[1] IP Australia, ‘Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021’, IP Australia (10 September 2021), https://www.ipaustralia.gov.au/about-us/legislation/designs-amendment-advisory-council-intellectual-property-response-act-2021
