The Australian Designs System: Reform on the Radar

Date: 2018-09-26
Author: Stuart Irvine

Australia’s Intellectual Property office has legislative reform of the registered design system on the radar: a 2019 “Intellectual Property Laws Amendment (A modern designs system) Bill”.   

The below provides an overview of some of the issues that are currently flagged for consideration and inclusion in the Bill.

Background

Between 2012 and 2015 Australia’s Advisory Council on Intellectual Property (ACIP – now disbanded) conducted a review of Australia’s 2003 Designs Act. In 2015 ACIP published its Final Report (here). The Report made a number of recommendations with respect to the designs system, many of which were accepted by the Government (here).

Largely in response to these recommendations, IP Australia has legislative amendment on the horizon with the anticipated “Intellectual Property Laws Amendment (A modern designs system) Bill”.  

Many things could, of course, disrupt the progress of such a Bill – perhaps first and foremost being when Australia’s next Federal Election will be called. All going well, however, a call for public consultation on issues to be addressed in the Bill will be made sometime in 2019.

A short summary of some of the more substantive issues IP Australia is currently proposing to address is provided below. For each issue, a link to the relevant IP Australia ‘Policy Register’ page is provided. If the issue is of interest, the Policy Register page allows comments to be submitted outside of any formal consultation process.

Issues proposed for consideration

Reconsideration of ‘virtual’ designs (here)

The current view of the Australian Designs Office is that transitory features generated on a display are not ‘visual features’ of a design.

The consequence of this is that the Designs Office will not (as a general rule) certify a design that relates to a graphical user interface or elements thereof – unless the hardware on which the GUI elements is itself new and distinctive. For further information on the Australian treatment of GUI designs see here.

In its Report, ACIP recommended that the treatment of designs such as this be reconsidered.

At the time ACIP made its recommendation, the view of the Designs Office was that a product had to be considered in an inactive or resting state (a state in which any graphical user interface elements would not be displayed). The legislative basis for imposing such a requirement was – and remains – unclear, ACIP’s specific comment being:

There is nothing in the legislation which requires that visual features be observable in the 'resting' state or when unconnected to electricity.  IP Australia should reconsider, and abandon, this aspect of its practice in assessing the validity of designs.

Given this, ACIP may have been recommending that the Design’s Office reconsider its approach (within the bounds of the existing legislation) and/or reconsideration of the relevant legislative provisions.

Since ACIP’s final report a further Designs Office decision regarding graphical user interface designs has issued: Apple Inc [2017] ADO 6. In that decision, the Hearing Officer stepped away from requiring the design to be considered in a resting state. Instead, the Hearing Officer reached the same outcome by holding that a graphical user interface element could not be considered a visual feature of a product as required by the Designs Act.

In any event, reconsideration of this issue – whether at a legislative drafting level or a Designs Office interpretation level – is welcome.

Registrations in respect of partial products (here)

Australian design law requires a design to be in relation to a product, and that a product is a thing that is manufactured or hand made. Partial products – i.e. parts of a product that are not separately made – are not permitted.

When combined with the Australian validity and infringement tests (which require the overall appearance of the product to be considered) this can present difficulties: it is not permitted to depict a partial product, but once a feature has been depicted it cannot be entirely ignored when determining validity or infringement.

ACIP recommended review of this situation, but with a focus on whether allowing partial designs would enhance international harmonization.

In the author’s view, allowing for the registration of partial designs would be a welcome change. In considering this, however, a number of entwined issues are at play:

  • the allowance (or otherwise) of partial products at a threshold level;
  • the validity and infringement tests, which currently require consideration of the overall appearance of the product; and
  • the current Statement of Newness and Distinctiveness mechanism, which allows for features to be de-emphasised but not ignored entirely.

Given their potential interplay, all of these issues should all be taken into account in any consideration of partial products.

Deferral of design publication (here)

Due to Australian design procedure, the latest publication date for a design is typically 6-8 months from the design’s earliest priority date.

There is no formal mechanism for deferring publication further.

Requests to introduce a deferred publication mechanism have been made, with ACIP’s recommendation being to consider this issue further.

The recommendation includes a proviso that if deferred publication provisions are to be provided they should be accompanied by changes to the infringement provisions to protect against innocent infringement of an unpublished design.

A grace period for self-disclosure (here)

Australian patent law provides grace period provisions that operate to forgive a patent owner’s disclosure of their own invention – intentional or otherwise – before filing (provided certain conditions are met).

No such provisions apply to designs.

ACIP has recommended introducing a 6 month grace period for designs and an accompanying prior user defence to infringement.

Clarifying the validity and infringement tests (here)

Under Australia’s current Designs Act, determining both the validity and infringement can involve assessing whether one design is ‘substantially similar in overall impression’ to another.

Assessment of substantial similarity in overall impression is defined by section 19 of the Designs Act. Section 19 sets out various factors that must be taken into consideration and defines that the standard of a person who is familiar with the product to which the design relates (or similar products) must be applied. The Designs Act refers to this as the ‘standard of the informed user’.

IP Australia has clarification of Section 19 on the agenda, noting that “two different approaches to determining who satisfies this standard” have emerged in Australian case law. The question is whether or not the person familiar with the product must be an actual user of the product (given the shorthand reference is the ‘standard of the informed user’), or could be a person who is involved with the product somehow but may not be an actual user of it – e.g. a designer, manufacturer, importer, seller etc.

Design terminology (here)

Australian design applications are registered on the strength of a formalities check only. If a registered design is to be enforced, however, substantive examination must be conducted and the design certified. 

There is concern that referring to an unenforceable design as ‘Registered’ could cause confusion. Accordingly, ACIP has recommended adopting alternative terminology, for example referring to ‘uncertified’ designs rather than ‘registered’ designs.  

Where to from here

While there has not yet been a formal call for public consultation on these issues, the linked policy register pages above allow comments to be submitted now.

When the formal call for public consultation is made, the consultation period could be quite short. Given this, if an issue is of interest there is potentially value in considering it now and being prepared to make submissions in short order.