Designs

Copyright & Designs Update 2023

Copyright & Designs Update 2023 Read More »

Designs law reform

IP Australia has published 3 consultation papers on proposed reforms to registered designs law:

  1. Public consultation of Protection for Virtual Designs
  2. Public consultation on Protection for Partial Designs; and
  3. Public consultation on Protection for Incremental Improvements of Designs

There are also 3 one page “fact” sheets to go with them:

(a) Virtual Designs;

(b) Partial Designs;

(c) Incremental Improvements,

but you probably want to read the consultation papers proper to understand them.

Incremental improvements

The idea here is that a designer may file a low-cost preliminary design and within 6 months file the “main design”. The priority date of the “main” design would be the preliminary design’s priority date. The “main” design may include “incremental” improvements over the preliminary design. This apparently means the “main” design must still be substantially similar in overall impression to the design disclosed in the preliminary design.

The term and rights to sue for infringement would run from the “main” design. Prior user rights, however, would end with the filing of the preliminary design.

In addition, after the “main design” has been registered, subsequent applications for “incremental” improvements may be linked to the registered main design. The “main” design and the preliminary design would not form part of the prior art base for the linked design. As with the preliminary design and the “main” design, it is proposed that a subsequent design must be substantially similar in overall impression to the “main” design. It is also proposed that “linking” could be requested during certification if the “main” design is cited against a later design application by the design owner.

According to the consultation paper, the term of the subsequent design would start from the filing date of the subsequent, linked design but end on the expiry of the maximum term (i.e. currently 10 years) of the “main” design.

Virtual designs

The consultation proposes to amend the definition of “product” from “a thing that is manufactured or handmade” to include virtual designs and to define a virtual design as “an intangible thing, the use of which results on the display of visual features through electronic means” and would make it clear it includes images only temporarily displayed on a screen.

It appears it is still contemplated that the virtual design would have to be registered for specific products – so the consultation paper gives the example that a graphical user interface (GUI) could be registered as a user for a coffee machine but not simply as just a “user interface”.

The consultation paper discusses a number of other issues including, in particular, how the copyright / design overlap provisions (Copyright Act 1968 ss 74 to 77A) and, especially, the concept of “industrially applied” would operate in this brave new world.

I guess one could ask, if X registers a design for a GUI, or icon, for a smartphone, does X just lose the ability to sue for copyright infringement in smartphones, or tablets and watches as well, or only after the expiry of the design for smartphones or not lose rights to enforce copyright at all?

Partial designs

This consultation looks at a range of amendments required to permit design registration for partial designs: that is, for parts only of a product. An obvious example is the handle of a cup rather than just the cup as a whole.

The consultation paper contemplates that products for this purpose may be physical products or virtual products or composites. One example given by the consultation is the protection of the pattern and ornamentation of a logo. However, the consultation paper contemplates that the logo would not provide protection for all products but would still need to be registered in respect of particular products such as travel bags, shoes, wallets etc. – that could mean a lot of registrations would be required!

The consultation paper discusses a range of other considerations and, in addition to welcoming general comments asks:

>1. Do you support IP Australia’s approach (outlined in this paper) to implementing partial designs protection in Australia? If not, why not? 

>2. Would you register your partial designs using the proposed system? If not, why not? 

>3. Are there any particular risks or unintended consequences that would arise from this proposal? 

>4. Would the copyright/design overlap provisions have any adverse effect on how design businesses commercialise their partial designs? 

Submissions

Submissions are due by 8 August 2023.

The consultation process landing page, with links to the documents etc. is here.

Designs law reform Read More »

Designs ACIP amendments in force

IP Australia advises that the final provisions of the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 came into force last Thursday, 10 March 2022.[1]

Included amongst the important reforms which came into force are:

  • the 12 month grace period (Sch. 1);
  • the new exemption from infringement for prior use (Sch. 2)
  • the removal of the “publication” option and automatic request for registration 6 months after filing (if not requested earlier): (Sch. 3)
  • protection from pecuniary remedies for infringement before publication of the design (Sch. 4)
  • exclusive licensees can sue for infringement (Sch. 5).

Most of these amendments apply to applications for registration made after the amendments commenced.

The “grace period” excludes from the prior art base for novelty and distinctiveness publications and uses by a “relevant entity” in the 12 months before the priority date of the application.

For this purpose, a “relevant entity” means the owner of the design, a predecessor in title and the designer (the person who created the design).

Publication of an application to register the design by a Designs Office is not excluded from the prior art base, however, on the basis that the main point of the grace period is to protect against inadvertent disclosures and not deliberate attempts to obtain registration.

The grace period is available only to applications made on or after commencement. However, there is a further wrinkle: the “grace period” applies (or appears to apply) only in respect of public acts or publications which occur on or after commencement too.

New s 17(1A) provides:[2]

Subsection (1) applies in relation to a publication or use that occurs on or after the commencement of Schedule 1 to the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (whether the 12?month period referred to in that subsection begins before, on or after that commencement).

Things might have been clearer if the words in parentheses had not been included in this exercise in plain English. But they are there. The wording at [19] in the Explanatory Memorandum is clearer:

New subsection 17(1A) provides that the new grace period provided for in new subsection 17(1) only applies to a publication or use that occurs on or after commencement of this Schedule. This is the case regardless of whether the relevant 12-month period would begin before, on or after commencement of the Schedule. This is intended to provide clarity for users of the design system that any publication or use prior to commencement will not be eligible for the new grace period.

That is, it appears the grace period will not be a full 12 months until 10 March 2023.

Another wrinkle relates to third party prior art. If the design owner (or other “relevant entity”) published the design before the publication of the third party’s prior art, the third party is presumed to have derived the design from the design owner and so it does not count as prior art. It is a presumption only. So, if the third party can prove it derived the design independently of the design owner (or other “relevant entity”) the third party’s design goes back into the prior art. See new s 17(1C).

The idea here is that how the third party derived its design is something essentially within the third party’s knowledge and so the third party has the onus of proving independent derivation.

The “prior user” exemption from infringement (new s 71A) works (if that is the right word) in much the same way as s 119 of the Patents Act. This requires the claimant to have taken “definite steps (whether contractually or otherwise)” to make, import, sell, offer to sell etc. a product which is identical to or substantially similar in overall impression to the registered design. It is an “exemption” rather than a “defence” as, amongst other things, it is transferrable.

In what should be a welcome development, IP Australia will be conducting a number of webinars to “walk through” the changes. You can register here.


  1. According to s 2 of the Act, Schedules 1 to 6 and 7 part 3 were to commence on a day to be fixed by Proclamation or, if not proclaimed earlier, on the day after 6 months from the date of Royal Assent – 10 September 2021.  ↩
  2. A consolidated version of the Act as amended hasn’t been published yet and hasn’t made its way on to Austlii or Jade (at least at the time or writing).  ↩

Designs ACIP amendments in force Read More »

More on the Designs ACIP bill

Following Friday’s post, the text of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 and the Explanatory Memorandum are now available.

So:

  • Schedule 1: the 12 month ‘grace period’ before the priority date for prior use/publication by or with the consent of the design. Publications by the Registrar of Designs (i.e. on the Register of Designs) or by an equivalent overseas person or body will not be able to claim the benefit of this ‘grace period’. On the other hand, if some third party starts using, or publishes, the design or a substantially similar design after the design owner, there will be presumption that the third party derived its design from the design owner. In other words, if the registered owner is relying on the ‘grace period’, the onus will be on the person asserting invalidity by prior use or publication in the 12 month ‘grace period’ to prove the prior art relied on was not derived from the registered owner or the owner’s predecessor in title.
  • Schedule 2: will introduce new s 71A to provide an exemption from infringement for persons who start using a design during the 12 month ‘grace period’ introduced by Schedule 1. The exemption will continue to operate after the design is registered. The exemption extends not only to those who actually engage in an otherwise infringing act but also to a person who: had taken definite steps (contractually or otherwise and whether or not in Australia) to do [the otherwise infringing] act…. According to the EM, ‘definite steps’ will not be satisfied by mere ‘initial steps’. The plans must be finalised and the process of acquiring or making all components must have started. Under 71A(4), the person entitled to the exemption may “dispose” of their entitlement so that the exemption passes to the disposee – presumably, it follows from the disposal of the entitlement that the disposer cannot continue to claim the benefit.
  • Schedule 3: removes the publication option – the nice flowchart of the options for requesting registration and the formalities check is now on p. 23 of the EM.
  • Schedule 4: will amend s 75 to provide a further ‘innocent infringer’ defence for acts done prior to registration of the design (when the design representations are first published). The amendment will give the Court a discretion not to award damages where the defendant satisfies the Court that, when the infringing acts were done, the defendant was not aware, and could not reasonably have been expected to be aware, that the design application had been filed.
  • Schedule 5: will give an exclusive licensee standing to sue for infringements. By proposed s 5A, an exclusive licensee will be defined to be as a person to whom the registered owner has granted the exclusive rights in the design.[1] An exclusive licensee may be empowered to sub-license. A person will not be disqualified as an exclusive licensee, however, if their exclusive rights do not include the right to sub-license.
  • Schedule 6: will empower the Registrar to specify the formal requirements for design applications by publishing notices – these formalities will no longer by specified in the regulations and such notices will not be “legislative instruments”
  • Schedule 7
    1. Repeals “the standard of the informed user” and replaces it with the “standard of the familiar person” adopted in Multisteps.
    2. Will give the Court a discretion whether or not to revoke a registered design on grounds of lack of entitlement unless satisfied in all the circumstances it is just and equitable to do so – this will bring the revocation power on this basis in line with s 138 of the Patents Act.
    3. Will permit revocation on grounds of fraud, false suggestion etc. perpetrated at the examination stage.
    4. Makes provision for ‘revived’ designs where the renewal fees are not paid until after the expiry of the initial 5 year term:
      1. If the renewal fees are paid within 6 months after expiry of the initial term (the so-called ‘renewal grace period’), the registration will be treated as remaining in force and never to have ceased;
      2. But if the renewal fees are paid after 6 months (on the basis of an application for an extension of time), the registration will be treated as having ceased on the expiry of the 5 year term.
      The significance of these differences is that a third party should not start using the design in the 6 month ‘renewal grace period’. The protections under s 140 will be available only to persons who start using after the expiry of the ‘renewal grace period’.

  1. Strictly speaking, the exclusive rights conferred by s 10(1)(a) to (e) only. Can anyone think of a rational reason why s 10 confers on the registered owner the exclusive licence to authorise people to do the acts in s 10(1)(a) to (e), but authorising an infringement is not an infringing act under s 71?  ?

More on the Designs ACIP bill Read More »

Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020

The Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020 was introduced into Parliament on Wednesday, 2 December.

At the time of writing the links to the text of the Bill and the Explanatory Memorandum are inactive.[1] You can read, however, the Minister’s Second Reading speech.

Also there has already been consultation on an exposure draft and IP Australia’s response to that public consultation. So we know broadly what is in the Bill, although there were a number of details to be worked out following IP Australia’s response.

According to the Minister’s Second Reading speech:

  • the Bill introduces the 12 month ‘grace period’ for design owners who make their designs publicly available before they file their design applications – this was Sch. 1 in the exposure draft. As the Minister pointed out, this will align Australia’s registered design law with “many of our major trading partners” (including the EU and the USA);
  • the Bill will give exclusive licensees standing to bring infringement proceedings – this was Schedule 4 in the exposure draft. In the exposure draft at least and as with patents, the exclusive licensee had to be the exclusive licensee of the whole right;
  • the Bill will remove the “rarely used” publication option so that every application will be an application for registration – one consequence of this reform as implemented in the exposure draft was that a design application will automatically proceed to formalities examination and registration 6 months after filing if registration was not requested earlier;[2]
  • there will also be a prior user defence for a person who commences using a design during the ‘grace period’ before the design application is filed – this was Schedule 2 in the exposure draft;
  • in addition, in cases where registration is delayed (up to 6 months from the filing date), there will be some sort of “innocent infringer” defence for a person who commences using the design in the period between filing and registration (as it is only on registration that the design representations are published);
  • there are also “smaller technical corrections and improvements” including revocation of a design for fraud, false representation etc. during certification.

Although the Minister’s Second Reading speech does not mention it, the exposure draft also included in Schedule 6 the amendment of s 19(4) to abandon the “informed user” test and adopt the “familiar person” test.

The Minister also indicated the Bill “is just the first stage of the Government’s ongoing program of designs reform, with more improvements to come after further consultation.” According to IP Australia’s consultation page (scroll down), the following matters are still on IP Australia’s Policy Register:

  • Protection of partial designs – Policy ID 42 This issue apparently has “high priority”;
  • Protection of virtual, non-physical and active state designs – Policy ID 43 This issue apparently has “high priority”;
  • Clarify ambiguity in section 19 of the Designs Act – Policy ID 35 A third issue with “high priority”;

(This is in addition to the change from “informed user” to “familiar person”.)

  • Clarification of ‘registered’ and ‘certified’ designs – Policy ID 37 Also “high priority”;
  • Some of the amendments proposed in Recommendation 18 of the ACIP Designs Review (18b, 18d, 18e and 18g are not progressing at this time) – Policy ID 45

For the research reports arising from the longer term Designs Review Project, see here.

Debate on the Bill itself has been adjourned to the first sitting day of the next period of sittings – presumably, in 2021.

Lid dip: Genevieve Corish at LexisNexis


  1. When they do appear (presumably in the next few days), they should be accessible from here and/or here.  ?
  2. This was Sch. 3 in the exposure draft. The exposure draft Explanatory Memorandum at p. 22 had a nice flowchart illustrating the application and registration process under the proposed regime.  ?

Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020 Read More »

Registered designs consultation

IP Australia has released exposure drafts of the proposed:

As the naming of the draft legislation indicates, these amendments are intended to implement the Government’s acceptance of the simpler, or less controversial, recommendations made by ACIP.

IP Australia’s landing page for the consultations states that proposals included in the draft include:

  • “Introducing a 12 month grace period to help protect designers from losing their rights through inadvertent disclosures made prior to filing.
  • “Expanding the existing limited prior use defence to protect third parties who started preparations to make a design before someone else tried to register it.
  • “Simplifying the design registration process by removing the publication option and making registration automatic six months after filing
  • “Aligning with the other IP Rights by giving exclusive licensees legal standing to sue for infringement
  • “Making several technical improvements to the Designs Act”.

You can find some background, including links to the various consultation papers, ACIP’s Review of the Designs System on the landing page.

If you are planning to submit comments, they should be in by 28 August 2020.

The landing page says that a number of proposals which are not being progressed in the draft legislation at this stage are still under consideration and invites your comments via IP Australia’s Policy Register. Proposals identified are:

  • “Protection of partial designs – Policy ID 42
  • “Protection of virtual, non-physical and active state designs – Policy ID 43
  • “Clarify ambiguity in section 19 of the Designs Act – Policy ID 35 
    Please note the part of this proposal relating to the standard of the informed user will be progressing and is included in the draft legislation
  • “Clarification of ‘registered’ and ‘certified’ designs – Policy ID 37
  • “Some of the amendments proposed in Recommendation 18 of the ACIP Designs Review (18b, 18d, 18e and 18g are not progressing at this time) – Policy ID 45“.

Registered designs consultation Read More »

Trumpet blowing

It’s that time of the year again when IPSANZ’ annual copyright and designs update comes up.

This year it takes place on 30 July, online – for those of you on the eastern seaboard starting at 1:00pm.

Registration is free for IPSANZ members, A$50 for non-members in Australia and A$46.50 for NZ and international non-members..

For registration and other details, including times for NZ and the other states and territories, go here.

Ordinarily, I would say “hope to see you there!”, but ….

Still, I do hope you can join in.

Trumpet blowing Read More »

Productivity Commission Response No 2

Parliament has now passed the wonderfully named Intellectual Property Law Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019. Text here[1] and EM here.

When enacted, the “Act” will amongst other things:

(a) insert an objects clause, new section 2A, into the Patents Act:

The object of this Act is to provide a patent system in Australia that promotes economic wellbeing through technological innovation and the transfer and dissemination of technology. In doing so, the patent system balances over time the interests of producers, owners and users of technology and the public.

That clears things up nicely doesn’t it?

(b) suppress the granting of more “innovation” patents;

(c) harmonise the regimes for Crown use of patents and registered designs;

(d) introduces a revised regime for compulsory licensing of patents.

The suffocation of innovation patents will be achieved by introducing new sub-section 52(3) into the Patents Act.

Sub-section 52(3) will make it a requirement of the formalities check that the date of the patent (if granted) must be a date before the date the amendment came into force.

According to the form of the “Act” on Parliament’s website sub-section 52(3) will come into force 12 months after the “Act” receives Royal Assent.[2]

Once the sub-section comes into force, therefore, it will be possible to seek further innovation patents only where they are based on filings with a date before the commencement date so, for example, a divisional application.


  1. The bill does not become an Act until it receives the Royal Assent.  ?
  2. There had been reports that the phase out period would be extended to 18 months, but that does not appear to be reflected in the document on Parliament’s website. These reports also indicated that there was to be a review of the impact of “abolition” on Australian small and medium enterprises.  ?

Productivity Commission Response No 2 Read More »

Registered Designs consultation

IP Australia has started consultations on policy issues to implement the accepted recommendations arising from ACIP’s 2015 Report. There is also “a more holistic review of the designs ecosystem, as part of the Designs Review Project”, but these proposals don’t relate to that.

In an interesting development, IP Australia has prepared a quick video overview.

There are three “key” topics as part of the current review:

  1. Examining the scope of design protection
  2. Early flexibility for designers
  3. Simplifying and clarifying the designs system

IP Australia’s website summarises the topics addressed by Examining the scope of design protection as including:

  • whether it should be possible to seek protection for partial designs;
  • whether screen displays, screen icons and GUIs should be protectible as designs; and
  • how s 19 works.

Early flexibility for designers addresses matters such as:

  • introducing a grace period;
  • delaying publication of design applications so that they can be synchronised with launch dates;
  • and getting rid of the pointless “publication” option.

Simplifying and clarifying the designs system trots out yet again the “technical” proposals to simplify and clarify the system. While previously these proposals were going to be the subject of a bill, now:

IP Australia seeks any views on these proposals, including their relative priorities, to help understand how and when they should be progressed.

If you want to contribute a submission, you should do so by 20 December 2019

Registered Designs consultation Read More »

Productivity Commission implementation part 2

IP Australia has released draft legislation for the proposed Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018.

Schedule 1 of the proposed bill includes measures to:

  • amend inventive step requirements for Australian patents (to bring them into line with the imagined approach of the EPO;
  • introduce an objects clause into the Patents Act 1990
  • phase out the abomination innovation patent system.

Well, 1 out of 3 is not so bad.

Schedules 2 – 4 propose the mooted amendments to the Crown use provisions (both patents and designs) and the compulsory licensing provisions.

There are also streamlining measures and “technical improvements” in schedules 5 to 7.

Download the draft bill, the draft EM and consultation questions from here.

Written submissions are due by 31 August 2018.

Productivity Commission implementation part 2 Read More »