08 May 2015


The Advisory Council on Intellectual Property (ACIP) report on Designs Protection [PDF] has been released.

The report states that in 2012 ACIP asked
to investigate the effectiveness of the designs system in stimulating innovation by Australian users and the impact the designs system has on economic growth. 
The following Terms of Reference were endorsed:
Inquire, report and make recommendations to the Australian Government on the operation and effectiveness of the Designs Act 2003 in supporting innovation, having regard to: any new opportunities for enhancing the Act’s effectiveness and efficiency; and  any deficiencies and unintended consequences arising from the Act’s implementation.
ACIP has approached this review with three broad questions in mind:
1. Has the Designs Act ‘provided a simple, cost‐effective designs system that provides Australian designers with more effective rights’? 
2. Are the provisions in the Designs Act operating as intended? 
3. Should policy decisions implemented in the Designs Act be reconsidered in light of experience with the new designs system and international and technological developments in the intervening decade?
As a result of the review, ACIP sees a clear need for increased harmonisation with international practices and treaties as this will benefit users of the system and help streamline its administration for the Government. ACIP considers that several of the changes introduced under the Designs Act need to be revised. Particularly, ACIP recommends compulsory examination for renewed designs, removal of the option for publication of designs as an alternative to registration and the re‐introduction of an opposition process. 
There is clear scope to improve design protection and clarify the law for both owners and third parties. ACIP sees benefits in introducing a grace period to protect against inadvertent disclosure of a design, changing the terminology used in the Act to clarify the distinction between a registered design and a certified design and improving consistency between the designs and copyright legislation. ACIP also recommends that the enforcement of design rights be extended to include authority for the Australian Customs and Border Protection Service to seize infringing goods. 
ACIP has also identified a number of minor, technical changes that could be made to the Designs Act to correct anomalies, streamline the processing of design applications and enhance the effectiveness of the system. 
In the course of the review ACIP considered the impact of new technologies on design protection. Consistent with the views of many stakeholders, ACIP considers that reform to address challenges posed by technologies such as 3D printing would be premature. ACIP considers that there are questions about the role of the designs protection system in Australia’s IP system as a whole. ACIP believes that if an overarching review of IP is undertaken by an independent body the role of design law and its interaction with other systems should be part of this review. ACIP would recommend that design law should be specifically included to avoid the common temptation to focus on the more prominent IP systems – patents, copyright and trade mark – and neglect smaller IP systems such as design.
ACIP offers the following recommendations
R 1 ACIP recommends that the Designs Act should be amended, as soon as practicable, to address anomalies identified by stakeholders and to adopt certain specific reforms that will bring Australian designs law into better alignment with equivalent laws of major trading partners, international treaties and proposed international treaties. 
R 2 a. ACIP recommends that Australia promote efforts to harmonise and streamline procedures for acquiring international registered design rights. b. Australia should commence an investigation into the implications of joining the Hague Agreement, including consulting with WIPO. Australia should monitor usage of the Hague system and in particular whether usage of the system increases as a result of recent expansions of its membership. c. Australia should work actively through the Designs Law Treaty process to promote harmonisation of filing requirements. 
R 3 ACIP recommends extending the maximum term of protection of designs to 15 years only if a decision is made to join the Hague Agreement. 
R 4 ACIP recommends changing the terminology for a registered but uncertified design to make it clear that the design does not, until certification, confer enforceable rights. ACIP suggests the term ‘uncertified design’ should be used. 
R5 ACIP recommends removing the option of the publication regime (ie without registration) from the designs process. 
R 6 ACIP recommends requiring a request for examination of the design by the first renewal deadline (five years). 
R 7 ACIP recommends introducing a system of opposition following certification, if recommendation 6 is accepted. 
R 8 a. ACIP recommends improving the process for multiple design applications by reducing the fees for each additional design added to the application, in accordance with the original proposal of the ALRC. b. ACIP further recommends that details regarding the eligibility of designs for inclusion in a multiple design application be developed with a view to consistency with relevant international treaties and proposed international treaties and harmonisation, if possible, with requirements in other major offices where Australians are likely to file design applications. 
R 9 ACIP recommends automatic publication at six months after the filing date, with the possibility to request publication earlier if desired, and with an amendment to the innocent infringer defence in subsection 75(2) of the Designs Act. 
R 10 ACIP recommends retaining the requirement of distinctiveness and section 19 of the Designs Act in its current form. 
R 11 ACIP recommends allowing amendment of the Statement of Newness and Distinctiveness in ways that identify particular visual features of the design as new and distinctive, up to the point of certification. 
R 12 ACIP recommends introducing a grace period of six months before the filing date, together with a prior user defence. Applicants who rely on the grace period to protect the validity of their design rights should be required to file a declaration to that effect. 
R 13 a. ACIP recommends retaining the current requirement that protection relates to the visual appearance of a whole product. b. ACIP recommends that, in investigating opportunities for international cooperation in design application processes and requirements with other offices overseas, IP Australia consider whether allowing partial product registrations would enhance harmonisation of application requirements in a way that would substantially advantage Australian applicants. If significant advantages to Australian applicants can be shown and IP Australia can confirm that such protection does not give rise to substantial practical or legal issues overseas, then ACIP would support reform of Australian law. 
R 14 ACIP recommends that the treatment of virtual or non‐physical designs be reconsidered, for example by allowing consideration of the product in its active state, not just its resting state, when considering validity. 
R 15 ACIP recommends that steps should be taken to make section 18 of the Designs Act consistent with the overlap provisions of the Copyright Act 1968
R 16 ACIP recommends the Government consider introducing (with appropriate resourcing of Customs) border protection measures that align with the Trade Marks and Copyright Acts (Notice of Objection Schemes) to allow for the seizure by Customs of alleged design infringements which are identical to certified designs. 
R 17 ACIP recommends retaining section 71 of the Designs Act in its present form. 
R 18 ACIP recommends amending the legislation as soon as practicable to address specific anomalies identified by stakeholders and listed by ACIP below. ACIP considers that these amendments would improve the operation and consistency of the Act and in some cases, consistency with other IP systems. The Designs Act and/or the Designs Regulations 2004 should be amended to ensure:
a. That rules regarding the identity of Convention applicants are consistent with rules relating to entitlement to designs; 
b. That international Convention applicants are not disadvantaged in cases where formal requirements differ between jurisdictions, by expanding the rules relating to priority claiming; 
c. Courts have the power, similar to that available under the Patents Act 1990 to refuse to revoke a design registration on the basis of lack of entitlement of the named applicant in appropriate circumstances; 
d. Design registrations are revocable on the basis of a lack of entitlement at the time of the revocation proceeding (rather than at the time of registration); 
e. The prior art base against which newness and distinctiveness is considered is expanded to include designs for products other than the product the subject of the registered design; 
f. The ground of revocation on the basis of fraud, false suggestion or misrepresentation extends to fraud, for example, during certification (not just registration); 
g. The opportunity to amend is broadened to allow for amendment other than to overcome a ground of revocation; 
h. Exclusive licensees have the right to bring proceedings for infringement; and 
i. Grace periods for renewal deadlines align with other IP Rights.
R 19 ACIP recommends no change to the trade mark/design overlap. 
R 20 ACIP recommends no change to the Repair Defence. 
R 21 ACIP recommends no change to the designs system at this time to respond to 3D printing and scanning technologies. 
R 22 ACIP recommends that Australia should not introduce protection for unregistered designs. 
R 23 ACIP recommends that the role of the designs system be specifically included in any broader review of Australia’s IP framework, such as a broader review that may be proposed in the Final Report of the Competition Policy Review.