Final report on the review of Australia's designs system

Date: 2015-05-07
Authors: Daneta Crump & Stuart Irvine

In 2012 Australia’s Advisory Council on Intellectual Property (ACIP) was tasked with reviewing the Australian designs system.
ACIP has now released its final report: here. Our previous update outlining the main areas considered by ACIP is here.

 Some of the more interesting recommendations are those concerning:

  • The introduction of a 6-month grace period (Recommendation 12).
  • Reconsideration of the ability to protect virtual/non-physical designs such as graphical user interfaces (Recommendation 14).
  • The introduction of border protection measures (Recommendation 16).
  • The introduction of Design Office opposition proceedings for certified designs (Recommendation 7).
  • The introduction of fee reductions where multiple designs are filed in a single application (Recommendation 8).
  • The introduction of a requirement to request examination of a design in order to renew protection beyond 5 years (Recommendation 6).

Other recommendations are made concerning the ability to protect partial products, design publication timing, the ability to amend Statements of Newness and Distinctiveness, the maximum term of protection, and the terminology used to refer to designs that are registered but not certified.

These recommendations are outlined in brief below.

Grace period

Recommendation 12: A 6 month grace period (and a prior user defence to infringement) should be introduced.

Australian law does not currently provide a general grace period for designs.

Under this recommendation, a 6 month grace period would be introduced to exclude a design owner’s own disclosure from the prior art base, provided an Australian design application is filed within 6 months of the disclosure. Where an applicant relies on the grace period, ACIP recommends that a declaration to that effect should be required.

To balance the proposed grace period, ACIP also recommends that a prior user defence to infringement be introduced. ACIP proposes a defence similar to that provided in Australia’s Patents Act, and suggests that it should operate to accommodate defendants who derive knowledge of a design through a publication covered by the grace period.

Protection for virtual/non-physical designs

Recommendation 14: The treatment of virtual or non-physical designs should be reconsidered.

The current approach of the Australian Designs Office is that virtual designs (such as graphical user interfaces) are not protectable. This approach is manifested in two ways:

a) a virtual design (e.g. a GUI) is not itself a product,
b) where a virtual design is related to a physical product (e.g. a display screen displaying a GUI), that product must be considered in a resting state (e.g. unpowered).

ACIP does not provide a solid recommendation as to whether the definition of a product should be expanded to include non-physical products – noting merely that if such a change was made, it would require a wide range of reforms to the Designs Act.

ACIP does, however, recommend that a product should be able to be considered in an “active” state (e.g. a screen which is powered and displays a GUI) and not just a resting state, as per the current approach of the Designs Office.

Border protection measures

Recommendation 16: Customs seizure provisions should be considered for introduction.

There are currently no border protection measures provided for designs.

ACIP recommends that the introduction of such provisions for designs should be considered. Generally, these provisions would allow an owner of a certified design to lodge a Notice of Objection, which would form the basis for  customs officials to seize alleged design infringements.

ACIP’s recommendation is that seizure would be limited to products that are identical to the certified design. This is narrower than the normal test of infringement which provides that an infringing product is one that is identical or substantially similar in overall impression to a design.

Post-certification opposition

Recommendation 7: A system for opposing certified designs should be introduced.

The Designs Act does not include provisions by which a certified design can be opposed. A registered or certified design can be challenged by requesting examination or re-examination, both of which are ex parte processes. Invalidity proceedings may also be pursued in the Federal Court.

ACIP recommends introducing a Design Office opposition system that closely aligns with those that exist for patents and trade marks. The intention is to provide a low cost forum for resolution of differences between parties.

Multiple design applications

Recommendation 8: A reduction in fees for designs included in a multiple-design application should be introduced, and details defining the eligibility of designs for inclusion in a multiple-design application should be developed.

The 2003 Designs Act provides the ability to file multiple designs in a single application. This ability was, amongst other things, intended to reduce costs for applicants.

Currently, however, design charges are levied on a per design basis – not a per-application basis. As a consequence, a design must be individually registered, examined, and renewed (all at the same per-design cost) whether filed in a stand-alone application or in a multiple-design application.

Many foreign countries provide a reduction in costs for multiple designs in the one application. There are restrictions on the kinds of designs that may be included, and these differ between countries.

ACIP supports the introduction of fee reductions for multiple designs that are filed in a single application.

Compulsory examination

Recommendation 6: A requirement to request examination before the first renewal deadline should be introduced.

An Australian design registration does not need to be examined to remain on the Register. Only 20% of registrations are examined. ACIP noted that allowing unexamined registrations to remain on the Register for their full term creates uncertainty for third parties, given many of these designs may not successfully obtain certification following examination.

Many submissions made to ACIP supported a system where, in order to renew a design, examination must be requested. The intention here is to provide a balance between making examination compulsory and providing applicants with time to determine which designs they intend to continue to protect, without incurring the upfront cost of examination for all designs.

ACIP’s recommendation is to require design owners to request examination by the first renewal deadline (currently 5 years from filing).

Protection for partial products

Recommendation 13: Further investigation should be undertaken.

An Australian design must be in relation to a product. A product can only be a component part of a larger product if it is itself separately manufactured.

This can make protecting a “partial product” – i.e. a part of a product that is not separately manufactured from the whole – difficult. While a Statement of Newness and Distinctiveness can be filed emphasising the relevant part, validity and infringement are still assessed in the context of the overall impression of a design.

A number of submissions were made advocating that protection for “partial products” should be possible.

In this instance, ACIP’s recommendation is that if the ability to protect “partial products” would advantage Australian applicants (either directly or in an international harmonization sense) it would support reform to provide this. ACIP also notes, however, that it does not have sufficient information to assess this, and as such recommends further investigation be undertaken.

Deferral of Publication

Recommendation 9: Designs should be automatically published six months after filing, with the option to request publication earlier.

Designs are currently published upon registration. Registration occurs relatively quickly after a design application is filed (usually within two to three weeks).

A number of submissions advised ACIP of the ability to delay publication by deliberately submitting applications that raise formalities issues, gaining additional time before registration and publication occurs. It was ACIP’s view that this creates complexity and disadvantages unsophisticated users of the system.

ACIP therefore recommends automatic publication of a design at six months after the filing date, with the possibility to request publication earlier, if desired. ACIP also recommends an amendment to the innocent infringer defence, suggesting that damages for infringement apply from the date the design is published.

Statements of Newness and Distinctiveness

Recommendation 11: Amendment to a Statements of Newness and Distinctiveness should be possible until a design is certified.

Statements of Newness and Distinctiveness can be filed to emphasize features of a design. This is relevant for validity and infringement considerations where particular regard is given to any emphasised features (though in the context of the design as a whole).

Currently, Statements of Newness and Distinctiveness can only be amended up to the registration of a design. In Australia registration is based on a formalities check, with substantive examination only occurring if certification of the design is requested. A consequence of this is that it is not possible to amend a Statement of Newness and Distinctiveness during the certification process.

If this recommendation is accepted, amendment to a Statements of Newness and Distinctiveness will be possible during the certification process. This would permit, for example, features of a design to be emphasised to distinguish the design over the prior art identified during examination.

Term of protection

Recommendation 3: The maximum term of protection of designs should be increased to 15 years only if a decision is made to join the Hague Agreement.

Currently, the maximum term of protection for an Australian design is 10 years.

Whilst submissions in response to both the ACIP Issues and Options Papers generally supported extending the maximum term to 15 years, ACIP did not consider there was enough evidence to support doing so. ACIP’s opinion is that extending the maximum term of protection by five years would not act as an incentive for greater investment in design.

Therefore, ACIP has only recommended that the maximum term be extended to 15 years if there is an international obligation to do so – e.g. if Australia joins the Hague Agreement.

Clarification of ‘registered’ and ‘certified’ designs

Recommendation 4: Registered but uncertified designs should be referred to as ‘uncertified’ designs.

An Australian design is not enforceable until it has been examined and certified. Research undertaken by the Intellectual Property Research Institute of Australia found evidence of confusion when referring to an unexamined design as a ‘registration’ or ‘registered design’, which implies an enforceable right.

ACIP believes that a terminology change is required to make it clear that a design does not, until certification, provide enforceable rights. ACIP suggests that a design that is registered but has not been certified be referred to as an ‘uncertified design’.

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The final report will be reviewed by the Australian Government and, if recommendations are accepted, amendments to Australia’s Designs Act will be proposed.