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.
Included among 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 for 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:
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  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”) publishes 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 from 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 derives its design is something essentially within the third party’s knowledge and so the third party has the onus of providing 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, among 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.