How updates to the Designs Act may help with prior disclosure.

Article | 1 July 2021

How updates to the Designs Act may help with prior disclosure.

How updates to the Designs Act...

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Overview of Designs

A design application is used to protect the overall appearance of a product including shape, configuration, pattern or ornamentation. The product could be three-dimensional, such as a watch, or two-dimensional, such as a pattern on textile fabric. A design registration protects the visual appearance of a product, but not its underlying function.

A design is registered in Australia according to the requirements of the Designs Act 2003. For a registered design to be enforceable, it must be “new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.” The assessment for newness and distinctiveness is currently based on the “standard of the informed user”.

Under the current provisions, disclosure of a design by the designer before filing an application to register the design, such as through publication in marketing materials, would invalidate the design application based on the newness test.

What is changing in the Designs Act?

The issue of prior disclosure and its effect on registrability has long been a source of frustration for many users of the design system. Australian patents, for example, have a grace period that allow certain prior disclosures to be disregarded when assessing novelty and inventive step. To date, the Designs Act has not provided a grace period, but it appears that this is about to change.

On 2 December 2020, a bill entitled the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 was introduced to amend the Designs Act. As the name suggests, the bill was drafted in response to a review by the Australian Council on Intellectual Property (“ACIP”). The ACIP review was released in March 2015, so these amendments have been long time coming.  The bill passed through the Senate on 4 February 2021.

There are a number of proposed changes to the Designs Act, with the most notable being the introduction of a 12-month grace period which allows for pre-filing publication or use of a design. Simply put, publication or prior use of a design by the designer is disregarded during examination of a registered design application if the application is filed within 12 months from the first publication or use date.

The introduction of a grace period would also align Australia’s registered design system with jurisdictions that already have a grace period, such as the United States, the European Union, and Japan.

It is important to note that the purpose of the grace period is not to enable a designer to test a design on the market before filing a registered design application; rather, it is a mechanism that enables the designer to still validly file a design application even though an accidental disclosure of the design has taken place.  Despite the grace period, publishing a design before filing may still have negative consequences.  For example, a third party that commences commercialisation of a competing design after the publication of a design but before the design has been filed is likely to be exempt from infringement and therefore able to continue commercialisation.

The grace period is also not a silver bullet for all disclosures as it does not apply to official publications of a design by overseas Designs Offices.

The proposed amendments to the Designs Act also change the reference to the “informed user” to a “familiar person” for considerations of newness and distinctiveness. There is argument that an “informed user” relates to someone who has used a product, whereas a “familiar person” may include consumers who might be familiar with a design but have never actually used the product that is the subject of the design. The impact of this proposed change may be significant during examination and infringement, but it will take legislative review before the Courts until the full impact of this change is known.

What about the design/copyright overlap?

The Designs Act overlaps with the Copyright Act 1968, and the intention of this interaction is to prevent a design that could be registered under the Designs Act (a period of 10 years protection) from having prolonged protection afforded by the Copyright Act (life of the author plus 70 years). Without going into unnecessary detail, in specific situations, aspects of copyright are lost when a design is “industrially applied”, but the relevant provisions are complex and cumbersome. Unfortunately, the proposed amendments do not address this.

The introduction of a grace period will help to bring the design laws in Australia into line with some of our major trading partners.

Author

Steven Starkie

Principal