12 month ‘grace period’ introduced for Australian Registered Designs and other reforms

Photo by Kumpan Electric on Unsplash

Reforms to Australia’s Registered Designs system were passed into law on 30 August 2021. The reforms are contained in the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021.

A notable change is the introduction of a 12 month ‘grace period’ in Subsection 17(1) that enables a design application to be filed up to 12 months after disclosure.

The ‘grace period’ for Registered Designs (and other reforms discussed below) will come into effect as of 10 March 2022.  The grace period only excludes from the prior art base designs that have been published or used on or after 10 March 2022. The grace period does not apply retrospectively to designs published or used before this date.

However, there are some other important reforms that should streamline and improve the operation of the Registered Design system in Australia.

Grace Period

The ‘grace period’ allows for an application for a Registered Design to be validly filed even after the designer has publicly disclosed or commercialised the design.

The new ‘grace period’ aligns the Australian Designs system other countries and regions that offer a 12 month grace period such as the United States of America and Europe.  It also aligns with the Australian Patent system which also offers a 12 month ‘grace period’.  

The ‘grace period’ for Registered Designs will come into effect as of 10 March 2022. However, the 'grace period' will only apply to publications on or after commencement of the new provisions on 10 March 2022.

There will be an important exception to the 'grace period' in that it will not apply to designs published by a foreign intellectual property office. This means the 'grace period' may not be used to circumvent the usual 6 month deadline to claim priority from a basic design application in a foreign country under the Paris Convention.

The primary purpose of the ‘grace period’ is to protect designers from inadvertently losing their rights because of inadvertent disclosure.  

Prior Use Defence

However, because the ‘grace period’ may be used strategically by designers to allow them to test the market before registering a design this could leave competitors exposed who might proceed on the assumption that a design has not been registered.

To deal with this issue, a prior use defence to infringement has been introduced into the Designs Act in Subsection 71A.  The defence provides an exemption to infringement for acts that commenced before the priority date of the registered design or where definite steps to do such acts occurred before the priority date, that would otherwise infringe the design.

Innocent Infringement Prior to Publication

In further reforms, a more limited exemption to infringement has been introduced to protect an innocent infringer who infringes a design between filing and registration as they would have had no way to know of the existence of the design application. However, there are some restrictions in that the infringer must be able to show they had no knowledge of the design or any reasonable way to find out.  This emphasises the imperative fora design applicant to mark products with design application particulars to reduce the potential for innocent infringement.

Other Reforms

Other reforms include that registration of a design application will be automatic 6 months after filing instead of being optional.  This will effectively allow for delay of publication to be deferred by up to 6 months which will allow the applicant to withdraw the design prior to publication.

Also, exclusive licensees of design rights will be able to take action against infringers without having to rely upon the owner of the design.

If you have any questions about the design registration system in Australia then contact Daniel McKinley.

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