cost benefit analysis

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.