Designs amendment on the horizon: is this the saving grace for Australian designs?

By Robert Munro, Scott Sidley
Intellectual Property Patents & Trade Marks

In brief 3 min read

The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 exposure draft has been released. Key proposals include a 12-month grace period for filing a design after disclosure, and a corresponding prior use provision to protect third parties who commence use of a design before its priority date.  

These changes will make it easier to coordinate design registrations across jurisdictions and, for now, current best practice filing strategies remain the same. 

Key takeaways

  • It remains best practice to file design application(s) before public disclosure of the design.
  • Third parties will have greater certainty regarding when they can use publicly disclosed designs without liability for infringement.
  • The proposed changes will make it easier to coordinate international design applications where there has been a pre-filing disclosure.

Who in your organisation needs to know about this?

Designers and those responsible for publishing designs or filing design applications.

Proposed changes

  • 12-month grace period;
  • Expanded prior use defence;
  • Automatic request for design registration six months after filing (no need to request registration);
  • Standing for exclusive licensees to sue for infringement; and
  • Technical improvements to the Designs Act.

Importantly, unregistered design rights will not be coming in as part of these changes. Registered designs will remain the only design rights in Australia.

Grace period

Subject to some minor exceptions, publication or use of a design that occurs in the 12 months prior to the design's priority date will be disregarded when assessing whether the design is new and distinctive. This change will allow design registration even after prior disclosure of the design, preventing designers from losing their rights through pre-filing disclosure.

Prior use defence

The defence will protect third parties from infringement claims if they began using a design, or one substantially similar, before the design's priority date (eg they see your design has been disclosed and start selling it before you file an application). This defence will protect the third party from infringement claims even once the design has been registered, meaning they will be able to continue using the design despite the fact that someone else has a valid registration.

What does this mean for you?

Current best practice filing strategies remain the same. Where possible, design applications should still be filed before disclosure of the design(s).

Use of the grace period will be a last resort that should only be used when absolutely necessary (eg when there has been an inadvertent disclosure of a design prior to filing). The grace period should not be seen as a way to hedge your bets by, for example, waiting to file an application only once the design gains popularity.

Consistent international approach

These changes will make it easier to coordinate design registrations across jurisdictions.

Design legislation in many other jurisdictions, such as the United States, Europe and Japan, already provides 12-month grace periods. Aligning with these jurisdictions will remove current issues that commonly result from Australia's lack of a grace period. For example, an American designer might disclose their design and is able to use the grace period to register in the US but cannot obtain valid protection for that same design in Australia because pre-filing disclosure is currently fatal.  

Full proposal

As outlined above, there are several other proposed changes, all of which you can view in full here.

Actions you can take now

Contact us today for assistance with developing a designs filing strategy and registering your designs.