registered designs

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).  ↩

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

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

ACIP – Designs Options Paper

The Advisory Council on Intellectual Property (ACIP) has released an options paper for arising from its Review of the (Registered) Designs System.

The Options Paper identifies 3 potential routes for further development of designs law in Australia.

Option 1 would involve addressing a few specific issues in how the 2003 Act works without revisiting the policy settings. This could involve:

  • making the identity of Convention applicants consistent with the rules on entitlement;
  • expanding the rules on priority claiming so that differing formal requirements between jurisdictions do not disadvantage Convention applicants;
  • bringing the rules on entitlement into line with the Patents Act;
  • expanding the prior art base so that it is not just limited to the product the subject of the application;
  • expanding the situations where fraud, false suggestion or misrepresentation can be invoked for revocation purposes;
  • allowing exclusive licensees to sue for infringement;
  • making it clearer that a registered, but uncertified, design does not confer enforceable rights until certification;
  • removing the option to publish a design instead of registering it;
  • reducing the fees for multiple designs included in a single application; and
  • addressing anomalies that have arisen in the copyright-design overlap, especially in relation to 2D and 3D ‘embodiments’.

Option 2 would include the changes identified under Option 1, but going further to bring Australian law more into line with “major trading partners and international treaties”. That could involve amending the Act to allow accession to the Hague Agreement. Changes could involve:

  • extending the term of protection from 10 years to 15 including introducing a require to obtain certification on renewal after the first 5 years and a system of opposition following certification
  • introducing a grace period of 6 months
  • deferring publication to registration
  • introducing customs seizure provisions

Option 3 is summarised in the Executive Summary as:

a wholesale revision of the role of the designs system in Australia’s IP law, including consideration, in particular, of the need for unregistered design protection, and the scope of design protection (including the scope of secondary liability) in the context of technological developments such as 3D scanning and printing. This would also involve consideration of whether protection should be extended to partial designs and whether virtual or non-physical designs (such as screen displays and icons) should themselves be treated as products.

ACIP appears to consider Option 3 would be appropriate if the policies reflected in the 2003 Act no longer make sense or have been superseded. Examples where this might be the case include unregistered design right, full copyright proection regardless of industrial application or broader rights such as allowing registration for parts of products, such as handles, rather than for products as a whole.

The impending availability of 3D-printing, or at least its more widespread take up, is raised as a potential basis for pursuing option 2 or option 3.

ACIP does note that going down the path of Option 3 (at least) would involve costs as well as benefits and concludes:

ACIP does not presently have evidence sufficient to suggest that wholesale change would be in the national interest. ACIP envisages that Option 3 would involve consideration, not only of the designs system per se, but how it interacts with other systems: most obviously the copyright system, but also standard and innovation patents and other systems such as protection for confidential information. Ideally, such a review would also involve gathering more detailed evidence on Australia’s industrial and economic strengths, and developing strategies for industry development in the field of design, as well as more information on the operation of systems, such as those in operation in some European countries, which do not exclude industrial design from the copyright system. Such a review ought to be undertaken by specialist intellectual property economic, business and legal analysts.

In formulating these proposals, ACIP has taken into account responses to a survey it conducted as well as submissions.

ACIP would like to receive your submissions on these submissions on their return from the Christmas/Summer holidays: i.e. 23 January 2015.

ACIP – Review of Designs System Options Paper (pdf)

Another designs case

Well, a patents and designs case, but really it’s a case about entitlement: Kenny J has upheld the validity of patents and registered designs for “beer taps” which one company in the Fosters group – Foster’s Group Ltd – applied for “most likely [by] mistake”[1] as one of its subsidiaries, Fosters Australia, was the owner.

Fosters Australia commissioned another party to design some new beer taps for it, on terms that it would own the resulting IP.

When the applicatins for the patents and designs were filed, however, they were filed in the name of Fosters Group Ltd, Fosters Australia’s parent and the holding company of the group.

When the mistake was discovered, Fosters Group assigned everything to Fosters Australia. By then, however, the designs had been registered in Fosters Group’s name, although innovation patent applications were still pending.

Fosters Australia has sued Cash’s for infringing its patents and designs. Cash’s defences asserted invalidity on the basis, amongst other things, that Fosters Group was not an entitled person or the grant was obtained by fraud, false suggestion or misrepresentation.[2]

Kenny J rejected the attack on the patents on the basis that s 29 did not require an applicant for the patent to be the entitled person or someone claiming through him or her; it was necessary only that the patent was granted to someone who qualified under s 15. Kenny J further held that Fosters Group could assign the benefit of its applications to Fosters Australia.

Similar reasoning would apply to the designs s 21 and s 13, but the designs were already registered before Fosters Group assigned its rights to Fosters Australia. However, Kenny J found in circumstances that Fosters Group held the applications and registrations on constructive trust for Fosters Australia.

Patentology makes the point that, while all’s well that ends well, care needs to be taken in deciding who should make the application before it is filed.

Foster’s Australia Limited v Cash’s (Australia) Pty Ltd [2013] FCA 527


  1. [2013] FCA 527 at [127].  ?
  2. Patents Act 1990 s 138(3) and Designs Act 2003 s 93(3).  ?