On 31 October 2019, IP Australia released three Consultation Papers regarding reform to the Australian registered designs system.
The Papers are accompanied by an invitation to provide feedback, and set a deadline of 20 December 2019 to do so.
This article follows our earlier article “The Australian Designs System: Reform on the Radar”.
By way of brief background, however, the issues under consideration predominately arise out of a review of the Australian Designs System conducted between 2012 and 2015. This review resulted in a Final Report (here) which made a number of recommendations, many of which were accepted by the Government (here).
The Consultation Papers
IP Australia has divided the issues under consideration into three broad areas and published a Consultation Paper for each. These are:
1. The scope of design protection (Consultation Paper here).
2. Procedural flexibility (Consultation Paper here).
3. Simplification and clarification of the designs system (Consultation Paper here).
These Consultation Papers set forth the issues, the reform options currently being considered, IP Australia’s preferred option (where there is a preference), and specific questions on which feedback is sought.
Several of the areas under consideration are discussed below.
Virtual/non physical designs
(Consultation paper 1, Section 1.2, from page 12.)
This issue relates to whether or not Australia should afford design protection to virtual designs (e.g. user interfaces and the like).
The view of the Australian Designs Office is that virtual designs cannot be protected under the current Designs Act. Provided a design application in respect of virtual designs depicts some type of hardware (typically a broken rectangle indicating a display) it will be registered. If certification of a virtual design is requested, however, the Designs Office will find the design invalid unless novel and distinctive hardware is shown in the representations (more detail here).
In this regard, IP Australia presents three options:
1. No change, with IP Australia to “continue to monitor developments in this area with Australia’s best interests in mind.”
In the author’s view, maintaining a status quo in which the Designs Office will register but not certify virtual designs should not be considered a viable option.
2. Permit the protection of virtual designs but maintain the requirement for a design to be tied to a physical product (e.g. in a similar fashion to United States design patents).
It may, in fact, be possible achieve this outcome without legislative amendment, for example by modifying Design Office procedure to allow designs to be considered in an ‘on’ or ‘active’ state and not only a rest ‘state’.
3. Permit the protection of virtual designs by amending the definition of ‘product’ to include them.
This would remove the requirement for a physical product (even if simply a broken line rectangle indicating a display or device) to be shown in the design drawings.
This option is the most permissive (and the most progressive), and contemplates the protection of virtual designs even if they are not displayed on a particular device - e.g. designs that are somehow projected or generated by a device but are not displayed on or in a device. Examples of such designs can be found both in the digital realm (e.g. holograms) and the non-digital realm (e.g. the shape of a fountain’s water spray).
IP Australia states that it has no particular preference and welcomes further evidence.
Protecting parts of products
(Consultation paper 1, Section 1.1, from page 4)
Australian design law requires a design to be in relation to a product. 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 a product to be considered) the requirement for a design to be in respect of an entire product presents difficulties: it is not permitted to depict part of a product, but once a feature has been depicted it cannot be entirely ignored when determining validity or infringement.
Three options are presented, with IP Australia’s preference being no change.
1. No change. A design must be in respect of (and show) an entire product. A Statement of Newness and Distinctiveness can be used to give certain features greater weight, but only in the context of the overall appearance of the product.
2. Permit partial design protection, but limit it to similar products falling under the same Locarno classification. IP Australia provides the following example for this option:
“For example, protection of a cup handle design would be limited to its application to the cups or other products under the household goods class.”
3. Permit protection for any part of any product:
“For example, a partial design for a handle would be protected when it forms part of a cup, handbag, cabinet or car door.”
Providing a mechanism to defer design publication
(Consultation paper 2, Section 2.2, from page 11)
Australian designs are published on registration. Procedurally, registration must be requested within 6 months of the earliest priority date. As registration relies on a formalities check only it occur quite quickly: typically within 2 months of requesting registration.
Once registration has been requested there is no formal mechanism for deferring or controlling when registration (and therefore publication) occurs.
The options presented in this respect are as follows, with IP Australia’s preference being for no change to the current regime.
1. Make no change. (IP Australia’s preferred option.)
2. Introduce an option to defer publication for up to 6 months from the priority date (regardless of when registration occurs).
3. Automatically publish designs at 6 months from the priority date but allow owners to request early publication if desired.
The author finds these options odd.
The current regime already provides a mechanism for applicants to defer publication for up to 6 months from the earliest priority date. Despite noting that a number of countries provide mechanism for deferring publication for a longer period, none of the options put forward by IP Australia contemplate this – or, in fact, any mechanism for deferring publication for a longer period than is currently available.
A grace period for self-disclosure
(Consultation paper 2, Section 2.1, from page 4)
Australia does not currently provide a grace period for self-disclosure of a design prior to filing a priority application. In this regard, IP Australia presents the following options:
1. No change.
2. Introduce a 6 month grace period (and add a prior use exemption to infringement).
3. Introduce a 12 month grace period (and add a prior use exemption to infringement).
IP Australia states that its preferred option is the introduction of a 12 month grace period.
Clarifying validity and infringement tests
(Consultation paper 1, Section 1.3, from page 21)
Determining design validity and infringement in Australia typically involves 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, which sets out a number of factors that must be taken into consideration. There is criticism that there is a lack of clarity around Section 19, both in respect of individual factors and the interplay between them. For reference, the requirements of Section 19 are as follows:
Factors to be considered in assessing substantial similarity in overall impression
1. If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
2. The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
3. If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
Section 19 further defines that the standard of the informed user (a person who is familiar with the product to which the design relates or similar products) must be applied when assessing substantial similarity in overall impression.
With respect to Section 19, IP Australia is considering options with respect to clarifying:
1. whether the informed user must be an actual user of the product in question or simply someone familiar with it;
2. the various Section 19 factors (and their interplay);
3. whether Statements of Newness and Distinctiveness should remain optional, made mandatory, or removed.
Registered/certified designs: terminology
(Consultation paper 3, Section 3.2, from page 6)
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 argument that referring to unexamined (and unenforceable) designs as ‘registered’ designs generates confusion.
IP Australia presents a number of options for referring to registered but uncertified designs, stating its preference to be adoption of the term ‘uncertified’ designs.
The Consultation Papers also cover various other issues and reform options.
If you have an interest in protecting designs in Australia it would be worth reviewing the Consultation Papers or, at least, discussing with your Australian counsel to determine the potential impact of the reforms being considered.