Changes Ahead for Registered Design Protection

The Advisory Council on Intellectual Property (ACIP) has recently released a report on the designs system in Australia.  ACIP includes patent and trade mark attorneys, lawyers, rights owners and academics, and seeks to provide balanced guidance on issues referred to it by the Minister.  A process of consultation with users of the system and other stakeholders took place, so the views in the report are generally well considered.

The review is timely, as the Australian Design registration system was extensively amended in 2003, in the first major shake up since 1904.  The full report can be found here:

www.acip.gov.au/pdfs/ACIP_Designs_Final_Report.pdf

There were a total of 23 recommendations.  Many deal with a suite of amendments to correct anomalies in the legislation, and simplification and improvement of a range of technical issues in the legislation.  These proposals are overwhelmingly positive for IP developers.   Below are the highlights.

Hague Agreement – Simplify International Design Filings
One significant recommendation is to look more closely at joining the Hague Agreement.  This is an international system for filing and registration of designs, which would allow for very inexpensive international design registration.  Many Asian countries and the EU are members, and the US and Japan are in the process of joining.  It would be a great plus for Australian product developers, as it would cut the costs of international protection by 50% or more.

To join would require increasing the term of Design Registration in Australian to 15 years, from the present 10.  I have co-authored submissions, on behalf of AIPPI, supportive of Australia joining the Hague agreement.

Grace Period
This is a ‘get out of jail free’ provision.  For patents, disclosures by the applicant (or derived from the applicant without consent) in the 12 months before  filing a complete application are not part of the  prior art, and cannot be cited.  This is only true for Australia and certain other countries, for example the US, Canada and Malaysia.

There is no such provision for designs. The report recommends a 6 month grace period, but that the applicant must file a declaration about their prior use when filing.  The latter is unnecessary administrative red tape. The main users of the grace period is likely to be SMEs without detailed IP knowledge, and they are unlikely to meet this requirement.

In the AIPPI submission, we proposed a 12 months grace period (to match patents) without formalities.  We will keep pushing for this when possible.

We will keep you posted once a government response is received.

by Peter Franke