IP Australia Responds to Design Reform Consultation

Date: 2020-05-14
Author: Stuart Irvine

In late 2019, IP Australia called for feedback regarding potential reform of the Australian registered design (design patent) system.

IP Australia has now published its response to the feedback. This article summarises IP Australia’s views on several issues being considered.

Background

IP Australia’s response to the public consultation can be found here. It outlines IP Australia’s current views on the issues being considered, and also summarises the public responses that were made to the various issues put forward.

This article is the third in a series tracking potential reform of the Australian designs system. If of interest, additional background on the reform process is provided in the first two articles of the series:

1) The Australian Designs System: Reform on the Radar

2) IP Australia Calls for Feedback Regarding Reform of the Australian Designs System

Summary

The following table summarises IP Australia’s position on several of the issues currently in play.

Issue 
IP Australia response 
Likely consequence 
Protecting virtual/non-physical designs
Case for legislative change not made out.
Maintain as an open issue.
The Designs Office will continue to refuse to certify virtual design registrations.
Partial design protection
Case for legislative change not made out.
Maintain as an open issue.
The scope of protection for parts of products will be limited to their appearance in the context of the product as a whole. Component parts of a complex product will remain individually protectable.
Deferring design publication
Publication deferral mechanism not required.
No formal mechanism for deferring publication of a design application beyond approximately 6-to-7 months from the priority date will be available.
A grace period for self-disclosure
Amend legislation to provide a 12 month grace period (and prior user defence).
Self-disclosure of a design 12 months prior to filing a priority application will be disregarded in validity considerations.
Use of a design immediately before the priority date may provide an infringement defence.
Clarifying validity and infringement tests
Amend legislation to clarify that an ‘informed user’ need not be an actual user of the product in question.
Designs will be interpreted from a perspective of a person who is familiar with the relevant product, who may or may not be a user of the product.


Virtual/non-physical designs

This issue relates to whether virtual designs should be protectable as registered designs in Australia.

By far the majority of responses on this issue indicated a preference for allowing virtual design protection in some form.

Despite this, and agreeing that “protection should not be linked to physical products to remain technology neutral and inclusive of emerging technologies”, IP Australia does not consider that legislative change is warranted at this stage, and further evidence and consultation would be required before any such change was implemented.

The result of this is that the position in Australia with respect to virtual designs remains uncertain. Unless it changes its approach:

  • The Designs Office will register virtual designs.
  • The Designs Office will not certify virtual designs (certification being a necessary step if a design is to be enforced).

The issue has not, however, been considered by the Australian Courts, so the validity or otherwise of the Designs Office approach to virtual designs is not known.

Protecting parts of products

Australian design law requires a design to be in relation to a stand-alone product or a component part of a complex product. Further, the validity and infringement tests in Australia require the overall appearance of the product or component part to be taken into account.

As a consequence, protecting part of a product that is not separately made can be difficult, particularly if that part makes only a minor contribution to the overall appearance of the product. This issue relates to whether or not changes should be made regarding partial product protection.

Once again, despite an overwhelming view that an ability to protect partial designs is desirable (18 out of the 20 responses) IP Australia does not consider that a case for legislative change has been made. Instead it considers that further evidence and consultation on this issue is required. It appears that IP Australia intends to maintain this as an open issue but not take any action in the current reform process.

Providing a mechanism to defer design publication

As Australian law currently operates, there is no formal mechanism to defer publication of a design application beyond approximately 6-to-7 months from the priority date.

This issue is concerned with whether a publication deferral mechanism should be provided.

The majority of responses were in favour of providing a formal mechanism to defer publication. IP Australia, however, does not agree and is not proposing any legislative change in this regard.

A grace period for self-disclosure

Australia does not currently provide a grace period for self-disclosure of a design prior to filing a priority application.

By far the majority of responses were in favour of introducing a 12-month grace period and an accompanying prior user defence to infringement.

IP Australia intends to implement a grace period of 12 months from a design’s priority date: i.e. any self-disclosure within 12 months of a design’s priority date will be ignored. The grace period is to apply automatically, without having to make a specific/advance request.

In addition, IP Australia intends to implement a prior user defence to protect third parties who use a design immediately before its priority date.

Clarifying validity and infringement tests

Determining design validity and infringement in Australia typically involves assessing whether one design is ‘substantially similar in overall impression’ to another. The Designs Act 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.

This issue relates to the potential uncertainty as to whether the ‘informed user’ must be an actual user of the product in question or simply someone familiar with it.

In this regard IP Australia proposes to amend the Designs Act to clarify that the ‘informed user’ need not be an actual user of the product. This follows the interpretation adopted by the Australia Federal Court in Multisteps Pty Ltd v Source & Sell Pty Ltd 1, where Justice Yates held:

… the standard does not proceed on the requirement that the notional person be a user of the products in question – although, obviously, familiarity can be gained through use.2

IP Australia’s view is that no changes arise from other issues regarding the validity and infringement tests that were discussed (e.g. clarifying the application of the substantive similarity in overall impression test and whether Statements of Newness and Distinctiveness should remain voluntary).

Next steps in the reform process

IP Australia plans to release an exposure draft of the proposed changes to the Designs Act and Regulations in the second half of 2020.

While questions regarding the consultation are invited (consultation@ipaustralia.gov.au), it seems unlikely that any substantive changes to the positions set forward in the consultation response will be made in the near future.


1 Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743

2 Ibid [66]