Designs

A Designs Law Treaty

Leave a Comment / Designs / /

On 22 November 2024, the Diplomatic Conference adopted the Riyadh Designs Law Treaty.

The text as adopted is available here.

Perhaps the most notable point (apart from this long drawn process finally reaching a conclusion) is that the Treaty does not include a provision about the term of protection.

Before the Conference convened, the draft text had two competing proposals. One requiring members to provide design protection for at least 15 years. The second option provided members with the ability to choose between TRIPS (10 years) and 15 years. In the result, no agreement could be reached and the Treaty does not include either. Instead, paragraph 1 of article 2 provides:

>[No Regulation of Substantive Industrial Design Law] Nothing in this Treaty or the Regulations is intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial designs as it desires.

On the concrete side, Article 3(2) provides:

>This Treaty shall apply to industrial designs that can be registered as industrial designs, or for which patents can be granted, under the applicable law.

More practically, the Treaty read with the regulations does prescribe a closed list of documents and requirements for filing an application. By Article 4, each Member may require that an application contain some or all of:

>(i) a request for registration;

>(ii) the name and address of the applicant;

(iii) where the applicant has a representative, the name and address of that representative;

(iv) where an address for service or an address for correspondence is required under Article 5(3), such address; DLT/DC/26 page 7

(v) a representation of the industrial design, as prescribed in the Regulations;

(vi) an indication of the product or products which incorporate the industrial design, or in relation to which the industrial design is to be used;

(vii) where the applicant wishes to take advantage of the priority of an earlier application, a declaration claiming the priority of that earlier application, together with indications and evidence in support of the declaration that may be required pursuant to Article 4 of the Paris Convention;

(viii) where the applicant wishes to take advantage of Article 11 of the Paris Convention, evidence that the product or products which incorporate the industrial design or in relation to which the industrial design is to be used have been shown at an official, or officially recognized, international exhibition;

(ix) any further indication or element prescribed in the Regulations.

Rule 2 in the Regulations also includes a list of 16 other matters which may be permitted and Rule 3 provides for the permissible forms of representation.

Article 4(2) also permits a requirement to disclose in the application:

>an indication of any prior application or registration, or of other information, including information on *traditional cultural expressions and traditional knowledge*, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design.

To secure a “filing date”, the requirements under Article 6 are that the application contain in a language admitted by the receiving Office:

>(i) an express or implicit indication to the effect that the elements are intended to be an application;
(ii) indications allowing the identity of the applicant to be established;
(iii) a sufficiently clear representation of the industrial design;
(iv) indications allowing the applicant or the applicant’s representative, if any, to be contacted.

A jurisdiction whose laws immediately before it accedes to the Treaty require the following may also continue these requirements:

>(i) an indication of the product or products which incorporate the industrial design, or in relation to which the industrial design is to be used;
(ii) a brief description of the reproduction or of the characteristic features of the industrial design;
(iii) a claim;
(iv) the payment of the required fees;
(v) indications concerning the identity of the creator of the industrial design.

Article 8 also permits members to require that the application be filed in the name of the creator of the design. But this requirement may be satisfied by filing an application which includes a name of the creator as appellant or an assignment signed by the creator.

Article 7 also provides for a grace period of 12 months before the filing date, or priority date if priority is claimed from an earlier date, for disclosures made by the creator or his/her successor in title or by person who obtained the disclosed information directly or indirectly from the creator or his/her successor. This is consistent with section 17 of the Designs Act 2003 since the amendments introduced by the ACIP Implementation Act back in 2021. An alternative proposal providing for a grace period only in the case of disclosure at international exhibitions and the like was rejected.

Article 10(1) and Rule 6 provide that a member may a design to remain unpublished for at least 6 months.

The Treaty enters into force once 15 countries have acceded to it.

A Designs Law Treaty Read More »

Copyright, designs and sufficiency for patents

Leave a Comment / Copyright, Designs, Patents / / / , , , , , ,

I shall be presenting the annual Copyright and Designs Update for IPSANZ in Melbourne on 17 October 2024.

For those attending in person, lunch from 12:30 pm with the talk from 1:00 pm to 2:00 pm.

There is also an online option – but I hope to see you there in person.

Details and registration here.

and a Patents talk

On 24 October 2024, Craig Smith SC and Dr Claire Gregg from Davies Collison Cave Law are presenting on ‘Patent Claims – Support, Sufficiency and ‘Relevant Ranges‘.

Details and registration here.

Copyright, designs and sufficiency for patents Read More »

IP Australia consults on the Draft Design Law Treaty

Leave a Comment / Designs / / / , , , , , , , , , ,

IP Australia has opened a consultation on the draft Design Law Treaty which will be the subject of a Diplomatic Conference in November.

According to IP Australia’s announcement, most of the text is agreed but the outstanding issues are:

  • grace periods – namely the periods after public disclosure of the product when you can still seek design registration (Article 6) 
  • whether a procedural treaty should include substantive law (e.g. proposal for term of protection in Article 9bis)  
  • the option for an office to require disclosure when a designer has utilised any traditional knowledge, traditional cultural expressions or biological/genetic resources in the design (Article 3) 
  • whether IP offices should be required to provide an electronic system for design applications (Article 9ter and 9quater) 
  • the assistance WIPO should provide to developing countries (e.g. technical assistance and capacity building for the ratification of the treaty) (Article 22).  

Most of these seem unlikely to cause much difficulty for Australia.

The main substantive impact, hiding under the “e.g. proposal for term of protection Article 9bis“, is whether the term of protection should be raised to at least 15 years or Member States can choose to stay at the TRIPS minimum of 10 years. (You will remember six years ago now IP Australia published a cost benefit analysis of Australia raising the term of designs protection from 10 to 15 years.)

A requirement for the disclosure of utilisation of traditional knowledge, traditional cultural expressions or biological/genetic resources would be new – but seems to be the direction policy development is heading in Australia anyway. Of course, a big question will be just what is encompassed by those expressions and the consequences of both disclosure and failure to disclose.

There are also some options about filing requirements such as how many and which representations need to be filed which should be carefully considered if the promises of simplification and efficiency are to be achieved.

IP Australia requires submissions by 22 September 2024. That is a very tight timeframe, no doubt dictated by the fact the Diplomatic Conference is being held in November. As IP Australia has known about all these issues since last November, one might wonder why they are only getting around to consulting now.

These are links to the draft Articles, the draft Regulation and WIPO page on the Diplomatic Conference.

IP Australia consults on the Draft Design Law Treaty Read More »

Copyright & Designs Update 2023

Leave a Comment / Because I felt like it, Copyright, Designs / / / , , , , , , ,

I shall be giving an annual update on Copyright & Designs on 19 October at Corrs Chambers Westgarth in Melbourne.

My talk is scheduled to start around 1:00 pm following the Victorian Local Elections.

Details and registration via here.

I hope to see you there!

Copyright & Designs Update 2023 Read More »

Designs law reform

Leave a Comment / Copyright, Designs / / / , , , , , ,

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 »

Front views of two prior art microphones, the registered design and the XTrak

A case of design

Leave a Comment / Designs / / / , , , , , , , , , , ,

A case of design

Burley J has ruled that Uniden’s XTrak mobile radio product would infringe GME’s registered design.

Uniden had begun displaying in Australia images of its Xtrak product on its website and in its online shop, but was not yet selling the product. After an exchange of correspondence in which Uniden refused to disclose its proposed launch date, GME sought an interlocutory injunction to restrain infringement of its registered design. Instead, Burley J listed the matter for early final hearing:

How good is that?

Helpfully, Burley J’s decision includes images of the prior art as well as the registered design and the Xtrak. Front views of the two closest prior art as well as the registered design and the Xtrak are set out below:

GME Uniden and the prior art

The legal issue

By s 71, a person infringes a registered design if they make, import, sell, offer to sell etc. a product embodying a design substantially similar in overall impression to the registered design.

Whether a product is substantially similar in overall impression to a registered design is tested by the matters set out in s 19.

Those matters require the Court to give more weight to the similarities than the differnces having regard to the state of development of the prior art, whether or not there is a statement of newness and distinctiveness[1] and the freedom of the designer to innovate. As GME’s design was registered before the ACIP Response Act, these matters fell to be considered from the perspective of the “standard of the informed user”.

The s 19 factors are also used to determine the validity of a registered design.

Burley J noted that the ALRC had explained how the substantial similarity test was supposed to work at paragraph 6.7:

…. The word ‘substantially’ is preferred to ‘significantly’ because ‘substantially’ has already been interpreted in a copyright context to be a qualitative and not quantitative term. The qualitative test is useful to determine designs infringement without importing a copying criterion. A qualitative test will assist the courts in evaluating the importance of the similarities and differences between competing designs. ….

and:

The phrase ‘overall impression’ is preferred because it encourages the court to focus on the whole appearance of competing designs instead of counting the differences between them.

(The emphasis is Burley J’s.)

Burley J pointed out, therefore, the prior art is relevant not just to the validity of the design but also infringement as it helps determine the proper scope of the design.

Accordingly, where the state of the art was highly developed, distinctiveness may lie in only small advances. If so, however, a correspondingly close degree of resemblance would be required between the accused product and the registered design.

Comparing the designs

Burley J considered the overall shape of the registered design and the Xtrak was very similar, both being vertically symmetrical curve-shaped trapezoids tapering to the base. The screen arrangement and screen surrounds were very similar. As was the curved PTT (or press to transmit button) and the clear spatial separation below the upper buttons and the lower buttons.

Front views of the registered design and the Xtrac labelled to identify corresponding features
Registered design v Xtrac

His Honour noted a number of differences. The registered design had a slight “step in” feature (which contributed to the spatial separation between the upper and lower buttons on the front face); the lower buttons in the registered design were arranged a central trapezoidal button where the Xtrak had a central column of speakers; thirdly, the Xtrak had a row of dummy buttons centred on the top speaker element while the registered design displayed a curving speaker panel. Other differences, such as the visibility of the microphone and the top buttons, were relatively trivial and given less weight.

Burley J accepted that there were functional and ergonomic considerations affecting the design of such products. For example, the “basic architecture” of such products would include a PTT button, buttons, a speaker, a microphone, a boss and a downward-facing grommet. Others included a shape that could be held in one hand, the positioning of the PTT button on the left-hand side.

However, the evidence of the prior art showed there was considerable scope for variation in these features so a designer had considerable freedom to innovate.

Overall, Burley J held at [84] the Xtrack was closer to the registered design than the registered design was to the prior art and so infringed:

I take into account the state of development of the prior art in making my assessment, in accordance with s 19(2)(a) of the Act. In my view the informed user would regard the XTRAK to be more similar in overall impression to the GME design than any of the other prior art devices. The prior art base demonstrates that the overall shape of each of the devices considered in section 3.3 above varies considerably, from broadly rectangular, to trapezoidal, to the waisted rectangle of the Crystal. The two most similar to the GME design, in terms of shape, in the prior art are the TX4500S and the Standard Horizon, yet they have more obviously different appearances in terms of their front face arrangements.

2 other matters

First, the statement of newness and distinctiveness was so general, not identifying any particular features, it played no role in the assessment.

Secondly, as noted, the comparison fell to be made under the “standard of the informed user” test applicable before the amendments made by the ACIP Response Act.

Burley J applied the “familiar person” test developed by Yates J and also applied by Nicholas J, not the “informed user” approach. It does seem both practical and sensible for the Courts to apply the “familiar person” test to pre-ACIP Response Act cases now, given the divergent responses and the legislative adoption of the “familiar person” test going forward.

Final judgment matters

In his Honour’s final orders disposing of the proceeding, Burley J refused to make an order for delivery up and takedown against Uniden. The orders included an injunction, the infringing products had never been sold in Australia and there was no reason to believe Uniden would not comply with the injunction:

… the broad principle underlying the making of such order is that where an injunction has been made and, that notwithstanding, there is a basis for considering that there may be a temptation to act in breach of the injunction because of materials possessed by a party, then it may be appropriate to order delivery up and takedown: see Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2021] FCA 307. That circumstance does not arise in the present case. An injunction will be made against Uniden, a large corporation. There is no reason to believe that it would not behave in accordance with the injunction, as counsel for the applicant accepts. In those circumstances, and having regard to the correspondence which indicates that the XTRAK product has never been sold in Australia, it is appropriate to decline to make an order for delivery up and takedown.

Burley J also adopted a process designed to expedite resolution of the order that Uniden pay GME’s costs of the proceeding.

At the parties’ request, Burley J allowed them 14 days to negotiate the quantum of costs payable by Uniden to GME. If they were unable to agree, Burley J ordered that GME should file and serve within a further 14 days a Costs Summary in accordance with the Costs Practice Note (GPN-Costs). Uniden would then have a further 14 days to file and serve a costs response. If the parties were still unable to agree within 14 days of that service, then a Registrar was directed to determine the quantum including, if thought appropriate, on the papers.

A check on Federal Law Search shows the proceeding as “closed”.

GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520

  1. There was a statement of newness and distinctiveness here: “Newness and distinctiveness is claimed in the features of shape and/or configuration of a microphone as illustrated in the accompanying representations.”  ?

A case of design Read More »

Designs ACIP amendments in force

Leave a Comment / Designs / / / , , , , , , ,

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 »

The ACIP Designs Amendments have been enacted

1 Comment / Designs / / / , , , , , , , ,

On 10 September 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent, becoming the 100th statute enaceted by the Commonwealth Parliament this year.[1]

As the marvellously evocative title indicates, this Act amends the Designs Act 2003 to implement the recommendations of ACIP’s Review of the Designs System: Final Report from March 2015 which have been accepted.

Two amendments come into force straight away. The rest (unless proclaimed earlier) come into force 6 months (and a day) later – 11 10 March 2022.

Amendments with immediate effect

So, for design applications made on or after 11 September 2021, the distinctiveness of a design and its infringement will now be tested by the standard of “the familiar person”.[2] That is, s 19(4) has been amended to test distinctiveness:[3]

(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user) (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).

Australia’s adventure in testing the validity and infringement of a registered design by somethin akin to the EU’s “informed user”, therefore, has come to an end.

Also, s 93(3) has been amended so that the registration of a design can be revoked on lack of entitlement grounds only if the Court is satisfied that it is just and equitable to do so in all the circumstances. This brings revocation on entitlement grounds in line with the Patents Act.[4] The idea here being to ameliorate the harshness of the sanction to validity in the case of essentially honest mistakes.

This amendment will apply to any applications to revoke a registered design made on or after 11 September 2021. It does not matter when the design was registered.[5]

Amendments coming into force later

The remainder of the amendments come into operation later: If not earlier proclaimed, on the day after six months from Royal Assent.

A number of these have been covered in earlier posts. They include:

  • the 12 month grace period for publications or public uses made before the priority date by or with the consent of the registered owner, a predecessor in title or “the person who created the design” (Schedule 1);
  • conferring power on exclusive licensees to sue for infringement (Schedule 5);
  • the introduction of an exemption from infringement on the grounds of prior use (Schedule 2);
  • the application process will be changed so that, if a request for registration is not filed with the design application, a request will be deemed to have been made 6 months from the application date (if not made earlier or the application has not been withdrawn).[6] In other words (and assuming the application passed the formalities test), a design will be registered automatically 6 months after the application is filed rather than lapse if no request has been filed (Schedule 3);
  • relief from liability for infringement for acts done before the design was registered (i.e. between the priority date and publication of the design) (Schedule 4);
  • removal of the unused option to publish a design rather than register it (Schedule 3).

There are also some other, technical amendments.

Some care will be needed with the “transitional provisions”. For the most part, the amendments will apply only to design applications made on or after the commencement of the relevant amendments.

Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021

Explanatory Memorandum

Addendeum to the Explanatory Memorandum

The ACIP Report

Lid dip to Brett Massey at IP Australia for drawing my attention to the correct date the second round commence (assuming not proclaimed earlier).

  1. At the time of writing, the Act does not appear to be on Austlii, but you can find it here.  ?
  2. Schedule 7 Part 1 item 5(1) and (2).  ?
  3. Text in italics inserted by the amendment. This is my mark up I’m afraid.  ?
  4. Patents Act 1990 s 22A and s 138(4).  ?
  5. Schedule 7 Part 2 item 8 and Explanatory Memorandum para 248.  ?
  6. The “relevant period” is to be prescribed in the regulations but the helpful flow chart included in the Explanatory Memorandum indicates the “relevant period” will be 6 months.  ?

The ACIP Designs Amendments have been enacted Read More »

More on the Designs ACIP bill

Leave a Comment / Designs / / / , , , , , , , , , , , ,

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

1 Comment / Designs / / / , , , , , , , , , , , ,

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 »

Scroll to Top