Changes to the Australian Designs Act
23 September 2021
Changes to the Australian Designs Act have been introduced.
Among these is the inclusion of a grace period. During this grace period, applicants may publish their designs and make it public for up to 12 months before applying for protection of said designs. They can do this without affecting the validity of the protection. This change will come into effect on March 10, 2022.
Presently, a design must not have been made public prior to filing, making it “new and distinctive,” in order to be granted a design right.
Another change involves the design registration process. Designs filed on or after March 10, 2022 will automatically undergo a formalities check six months after the application’s priority date. This eliminates the need to request for registration, thus simplifying the process.
For Robert Munro, senior associate at Allens in Melbourne, the inclusion of a grace period is a welcome move.
“The amendment will ensure consistency with other jurisdictions where a similar grace period of 12 months also exists such as in the US and Canada.The grace period provisions will hopefully save some heartache for clients who inadvertently disclose their design before seeking registration, as frequently occurs in the case of multijurisdictional clients who do not always fully appreciate the consequences of disclosing their design prior to the filing date,” Munro explained.
However, he added that ultimately, the grace period provisions should not alter current filing strategies and that it is still best practice to file a design application before it is disclosed.
Munro's colleague Rob Vienet, associate at Allens, also added: “If considered in isolation, the grace period provisions would have the undesirable consequence of permitting designers to test the market before they seek registration of their design. However, it ought to be remembered that the grace period provisions will be tempered by other provisions. Notably, the grace period will be counterbalanced with a prior use defense which will protect third parties from infringement claims if the third party begins to use a design, or a substantially similar design, before the design's priority date. This means that the third party will be able to continue using the design despite a valid design being registered by the original owner. This reinforces the best practice of filing a design application before it is disclosed.”
There will be new formal requirements for design applicants and a consultation on a draft determination of these requirements will be held before the end of 2021.
Espie Angelica A. de Leon