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“.

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.

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.  ?

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

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.

IP Laws Amendment ( Productivity Commission Response Pt 1 etc) Bill 2018

On May 10, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 was referred to the Senate’s Economics Legislation Committee.

You may recall that, amongst other things, the Bill has another go at parallel imports and trade marks (which also entails repealing s 198A of the Copyright Act 1968), reduces the period before registered trade marks can be attacked for non-use, permits non-PBR-protected varieties to be declared as essentially derived varieties and a host of other reforms (Sch. 2 has 21 Parts)

The Senate committee is required to report on the bill by 22 June 2018.

If you are an agricultural organisation, medical research industry, an IP peak body (who is not going to INTA) or somehow at a loose end, you need to get your skates on as submissions must be made by 1 June 2018.

The Hague Agreement: a cost benefit analysis

IP Australia has published a cost benefit analysis for Australia joining the Hague Agreement for registration of designs.

You are no doubt thinking that sounds very exciting (not). But, even if you are not into registered designs, you SHOULD READ IT. This is the Government’s first attempt at applying the Productivity Commission’s call for any proposals to reform intellectual property laws to be economically justified. As the Report says in the first paragraph of the Executive Summary:

The report assesses the impacts [i.e., the costs and benefits to Australia of joining the Hague Agreement] with reference to the Productivity Commission’s (PC) guiding principles of effectiveness, efficiency, adaptability and accountability. This report is intended to form part of the evidence base in relation to whether Australia should join the Hague Agreement.

So, unless it involves an acronym that is like TPP, this could well be a harbinger of things to come.

And what does it conclude find:

  • IP Australia’s best estimate of the net benefit for Australian designers is $1.7 million;[1]
  • IP Australia’s best estimate of the net cost to Australian consumers from higher prices resulting from the longer term of design protection is $58 million;[2]
  • to add a little bit more spice to the debate, IP Australia’s best estimate of the net cost to Australian IP professionals is $2.5 million;[3] and
  • IP Australia’s best estimate of the net cost to the Australian government of implementing new systems etc. to comply with Hague is $2.8 million.[4]

The big question IP Australia is asking you is how realistic are these estimates?

Now, in arriving at these numbers, the Report does include quite a lot of hard data.
For example, most Australians who file designs overseas do so in the EU, the USA, NZ and China. On the other side of the coin, most incoming design registrations were from the USA, the EU, Japan, NZ, Switzerland and China.[5]

On the other hand, the Productivity Commission reported that less than 20% of registered designs are renewed beyond the first 5 year term.[6] According to IP Australia, however, approximately half of all design registrations are renewed for the second 5 year term and non-residents are more likely to renew than Australians.[7]

Will we become better at designing if we “stick” with our current settings – 19th out of the top 40[8] – or should we “twist” and sign up? Of course, there is an anterior question: do we even care about good design in the first place?

IP Australia is seeking feedback on its cost-benefit analysis and its proposed methodology to elicit additional evidence and views with the aim of finalising the analysis in 2018. You should get your say in by 31 May 2018.

The Hague Agreement Concerning the International Registration of Industrial Designs: A cost-benefit analysis for Australia March 2018


  1. This represents the costs savings from the simplified application procedure and the increased profits from taking new designs overseas. IP Australia estimates the range of benefit is from $0.03 million to $6 million.  ?
  2. This represents how much Australian consumers would pay to overseas owners of registered designs if the term of a registered design was extended from 10 years (currently) to the minimum 15 years required under Hague. IP Australia estimates a resulting range of net outflows from $23 million to $114 million.  ?
  3. IP Australia anticipates that “IP professionals” will garner some extra work at the examination stage but will lose work at the filing stage as the Hague Agreement provides for one central application to WIPO rather than multiple individual application to each separate jurisdiction. IP Australia estimates a range from a benefit of $0.3 million to a cost of $12 million.  ?
  4. The Government (presumably that means IP Australia) will incur costs between $2.3 and $3.4 million in upgrading its IT systems.  ?
  5. Report p. 10. It’s not clear from this part of the Report whether Australian applicants filed in all, some or only one of those destinations.  ?
  6. Productivity Commission, Intellectual Property Arrangements: Final Report, p. 337. These were the figures from ACIP as at 2013.  ?
  7. Report p. 11. In 2010, 66% of non-residents renewed. How the discrepancy between the Productivity Commission’s figures (i.e.,
    ACIP’s figures) came about is not clear.  ?
  8. Report Appendix 3 table 4.1.  ?

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

Government consultation papers on patent and trade marks

The Australian government has issued 5 consultation papers on how to implement some of the recommendations it has accepted from the Productivity Commission’s Final Report into Intellectual Property Arrangements:

Submissions are required by 17 November 2017 (with a view to introducing a bill as soon as possible).

I can’t say that introducing yet another inventive step test (there are 4 if you count common general knowledge alone – depending on which regime applies to the patent in question) makes much sense.

Most of the Productivity Commission’s reasoning was based on the common general knowledge alone test used in Alphapharm.1 It did find, however, that there had not been much change in the Commissioner’s rate of granting patents relative to the EPO since the Raising the Bar act was passed. However, so far as I could see, it doesn’t tell us how many applications the Commissioner had examined under the Raising the Bar regime and you would have to guess a large number were still under the 2001 regime.2

Essentially, the Raising the Bar regime allows any piece of prior art to be combined with common general knowledge to test obviousness. It also allows prior art information to be combined in the same way as one might expect an English court or an EPO board would.3 The Raising the Bar regime should in fact operate just like the UK/EPC regime and one would have thought we should give it a good chance to work!

  1. See e.g. the reliance on Angiotech Pharmaceuticals v Conor Medsystems Inc. [2007 EWCA 5 at [43]. ??
  2. The Merial case is the only judicial consideration I am aware of applying the regime introduced in 2001 but, if you know of others, let me know. ??
  3. See e.g. KCI Licensing v Smith & Nephew [2010 EWCA Civ 1260 at 6. ??

 

Unregistered design or registered design – UK

Over at the IpKat, Darren Meale has an extensive post explaining some of the intricate differences that arise when litigating an UK unregistered design right versus a registered design right. As he explains:

But UKUDR is quite powerful. As noted above, a designer can essentially make up what it says its rights are once it has seen an alleged infringement appear on the market, and it can lawfully do so in an immensely complex way. Only robust case management can deal with the menace….

Definitely well worth reading!

The case is Neptune v DeVol Kitchens [2017 EWHC 2172 (Henry Carr J)

Cutting the costs of designs litigation

Justice Carr in the UK has weighed into case management of design infringement cases in a big way.

Clingabeez[1] are apparently the runaway toy of the last year or so, being the Activity Toy of 2016 in the UK. They are the subject of a Registered Community Design. So, when what they allege are “copycats” hit the market, the letters of demand started flying. “Bunchem[2] is one such competitor.[3] It sued for unjustified threats and challenges the validity of the Registered Community Design. “Clingabeez” cross-claimed for infringement and denied invalidity.

At the initial case management conference, Clingabeez estimated a six-day trial and £776,000 costs; Bunchem estimated a four day trial and £360,000 costs.

Justice Carr considered both estimates were well out of order. His Lordship considered that a case relating to a registered design for a consumer product should be much simpler, largely dependent on the Court’s visual assessment of the evidence. In line with Court of Appeal decisions,[4] at [6], Justice Carr said:

(i) Registered design cases are concerned with the overall impression of the registered design, the alleged infringement and the design corpus. It is easier to see this than to describe it in words.

(ii) Admissible evidence in such cases is very limited, and is most likely to comprise technical evidence about design constraints. Such evidence is unlikely to require substantial cross-examination. It should be possible to decide a registered design case in a few hours.

(iii) If permission for expert evidence is to be given, then the precise ambit of that evidence should be defined. The expert should be told what question to address and the evidence should be confined to those questions.

(iv) It is clear law that whether the defendant has copied is irrelevant. It is equally irrelevant for the defendant to prove or to give disclosure about how his design was arrived at.

On the question of admissible evidence and further discovery, Justice Carr excluded evidence going to copying at this stage. Copying was not relevant to the question of infringement. However, it could be relevant to the remedy of additional damages. Accordingly, his Lordship postponed discovery and any evidence directed to that issue to any subsequent hearing on remedies if the trial on liability and validity resulted in a finding of infringement.

Both parties had already filed detailed particulars of, respectively, differences and similarities. Justice Carr did not consider the parties’ requests for further information about these matters would be helpful. However, his Lordship directed that each side should exchange concurrently enlarged photographs of the products alleged to infringe marked up to indicate the points it relied on.

His Lordship limited the expert evidence to the following matters;

There are very limited issues upon which expert evidence is admissible. The issues on which I intend to allow expert evidence are as follows. First, are any of the features listed in subparagraphs (1) to (9) of paragraph 6.5 of the Amended Particulars of Claim features of appearance of a construction toy such as Bunchems which are solely dictated by its technical function? Second, to what extent, if any, is the degree of freedom of design limited by the functional nature, if any, of the features of subparagraphs (1) to (9) of paragraph 6.5 of the Amended Particulars of Claim?

Bunchem” was happy with its expert evidence being limited to 10 pages and two pages (excluding exhibits) directed to the design corpus. “Clingabeez”, having asked for 20 pages, was permitted 15.

Justice Carr fixed the trial duration at three days including reading time, and did not think it would be necessary for any adjournment for preparation of final written submissions. His Lordship then set out at [23] eight “lessons for the future” to achieve shorter trials more expeditiously in such matters:

(i) The parties should, in appropriate cases, produce images at an early stage to show the differences or similarities upon which they rely, and in the case of the defendant, those features which are wholly functional or in which design freedom is said to be limited. Requests for further information are unlikely to be helpful.

(ii) Claimants should not try to introduce or seek disclosure in relation to copying. The parties should carefully consider why, if at all, disclosure is necessary, rather than agreeing to standard or even issue based disclosure.

(iii) Expert evidence as to whether the alleged infringement produces on the informed user the same or a different overall impression as the registered design should not be included in cases concerning consumer products.

(iv) The parties should try to limit the length of expert evidence to an agreed number of pages.

(v) If any evidence of fact is to be introduced, the court will need to be satisfied of its relevance.

(vi) The parties should be prepared at the pre-trial review to identify issues on which cross-examination is necessary, and to explain why.

(vii) Where multiple designs, or multiple infringements, are alleged, the parties should each select a limited number of samples on which the issues can be tested.

(viii) The parties should give careful thought to those issues which can be postponed to a damages enquiry, which will only need to be considered if liability is established.

Justice Carr’s approach would no doubt commend itself to Justice Finkelstein, were he still on the bench. It may also be rather more difficult for an Australian court to exclude evidence going to the “ultimate question”, given section 80 of the Evidence Act and the first Cadbury/Darrell Lea appeal. On the other hand, the relevance of copying is exactly the same.[5] Nonetheless, as both the Federal Court and the Federal Circuit Court are striving to make litigation more costs effective,[6] there may well be considerable interest in exploring Justice Carr’s admonitions DownUnder.

Spin Master Limited v PMS International Group [2017] EWHC 1477 (Pat)


  1. Otherwise known as PMS International Group.  ?
  2. Spin Master Limited.  ?
  3. Indeed, a Google search or visit to Youtube might see the two brand names used interchangeably. For example  ?
  4. Procter & Gamble Co v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] Bus LR 801 and repeated and expanded by the Court of Appeal Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206; [2013] Bus LR 328  ?
  5. Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588.  ?
  6. See also chapter 19 of the Productivity Commission’s Intellectual Property Arrangements – Final Report.  ?