Registered Designs: A grace period due to be introduced in Australia

Date: 2020-11-24
Author: Carl Harrap

In a significant proposed change to Australian Designs law, a 12 month grace period for self-disclosure of a design by a design owner is about to be introduced to Parliament.

As we previously reported, IP Australia has been consulting on designs reform in 2019 and 2020. Whilst a broader review continues, IP Australia has released draft legislation implementing a number of changes. These changes include:

  • Introducing a 12 month grace period for self-disclosure, commencing from the priority date;
  • Providing a presumption that a republication of a design, within the grace period and after publication by the design owner, was derived from the design owner and therefore covered by the grace period;
  • Providing that publications by Design Offices are not covered by the grace period;
  • Introducing a prior-user defence; and
  • Clarifying the validity and infringement tests.

Following consultation on the draft legislation, each of these four amendments will proceed, with some changes to clarify the intent of the legislation and remove inadvertent consequences. The amended legislation will now be introduced to Parliament. We particularly welcome the introduction of the grace period, providing some relief to design owners in the event of publication before a design application is filed.

Attorneys of FPA were pleased to support the continued attention on this important intellectual property right by providing submissions on the draft legislation. We also appreciate the consultation by IP Australia, which has adopted many of the suggested changes by FPA and others.

As mentioned, the review continues and interested stakeholders can provide submissions on future reform via IP Australia’s Policy Register. Significant issues still under consideration include the protection of partial designs and the protection of graphical user interfaces and other 'virtual' designs.