Australia: Expected Reforms to Design Law
May 2017, Australia
The Australian government has committed to the implementation of a number of recommendations made by the Advisory Council on Intellectual Property in its recent review of Australian design law. Those recommendations include the continuation of efforts to encourage international harmonisation, amendments to provide a more flexible threshold for protection and further review of the types of subject matter suitable for protection.
The government has committed to investigating the implications of Australia joining the Hague Agreement which governs the international registration of industrial designs. The government also accepted a recommendation that the maximum term of protection for designs in Australia be increased from 10 to 15 years if a decision is made to join the Hague Agreement.
Threshold for Protection
Australian design law provides that applicants may submit a statement identifying particular visual features of the design, to which particular regard is then had when determining the validity of the registration and infringement of the design. Currently, such statements cannot be effectively amended after registration. This limits the utility of the statements, because it precludes applicants from distinguishing their designs from prior art discovered after submission of the statement. The government has accepted, in principle, a recommendation that applicants ought to be able to amend those statements up to the point of certification of the design (which is a step necessary to enforce a design in Australia) provided the amendment does not broaden the scope of the applicant’s right. Australian design law does not currently provide a general grace period for designs – which is a period prior to an application for rights during which disclosure of a design is not included in the prior art. As a result, applicants can ruin their own chances of obtaining a valid registered design by prematurely publishing their design. The government has accepted a recommendation for the introduction of a grace period (of a duration to be determined after consultation), together with a ‘prior user’ defence that would allow third parties to continue to use the design if their use commenced prior to the filing date.
Subject Matter Suitable for Protection
Australian design law currently does not comfortably accommodate protection of non-physical designs, such as graphical user interfaces. This is because a design must relate to a ‘product’, which is defined to include ‘a thing that is manufactured or handmade’ and because the practice of the Designs Office requires the design of a product to be visible when the product is in its unpowered ‘resting state’. The government has accepted a recommendation that the treatment of non-physical designs be reconsidered.
Originally published in DesignWrites 10th Edition. Co-authored by Liam Maguire.