Introduce grace period for designs and a prior user defence

Issue summary

In its 2015 Review of the Designs System in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended (Recommendation 12) the introduction of a grace period of six months before the filing date, together with a prior user defence. The government accepted the recommendation in May 2016, noting the length of the grace period and requirement for an applicant to declare any disclosures at the time of filing will be determined at a later stage following further stakeholder consultation and development of international norms.

Currently under section 15 of the Designs Act 2003 a design is registrable if it is new and distinctive when compared to the prior art base for the design as it existed before the priority date of the design. The prior art base for a design consists of designs publicly used in Australia and designs published in a document within or outside Australia.

As a result, if a person, through ignorance or inadvertence, publishes their design before seeking legal protection, the design will not be able to be validly registered because the publishing becomes part of the prior use base. This limits the ability of the designer to test the commercial worth of a design for a limited time prior to submitting an application (for example, showing prototypes at trade shows).

History

• Policy development 4 September 2017
• Consultation 31 October 2019 to 20 December 2019
• Policy development 20 December 2019 to 12 May 2020
• Legislative drafting 12 May 2020 to 23 July 2020
• Consultation 23 July 2020 to 28 August 2020
• Legislative drafting 28 August 2020 to 2 December 2020
• In Parliament  2 December 2020 to 30 August 2021
• Royal Assent 10 September 2021
• Completed 10 September 2021

Comments

This issue is included in the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 which received Royal Assent on 10 September 2021.