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These issues are:
1. Harmonisation with international practices;
2. A grace period prior to application; and
3. The structure of the design fees.
In addition to the above, there has also been some discussion as to the effectiveness and inflexibility of the recently introduced “Statement of Newness and Distinctiveness”.
These issues are discussed in more detail below.
HARMONISATION WITH INTERNATIONAL PRACTICES
IP Australia is considering harmonising its design protection system with international systems and processes via, for example, acceding to the Hague System of international registration of industrial designs.
In summary, the Hague System provides the owner of a design the ability to have their design registered in a number of separate jurisdictions with a single application made to WIPO, in one language and with one set of fees. This is in contrast to the present system in Australia, which requires Australian nationals to file a national or convention application in each country of commercial interest.
Key features of the Hague System include a maximum term of registration of 15 years, multiple (up to 100) design applications and the ability to defer publication of the application for up to 30 months.
One main disadvantage of the Hague system is that some of Australia’s main trading partners including the United States, Japan, the United Kingdom and China are not yet members and consequently, would still require separate applications. For an up-dated listing of members of the Hague system, please go to: http://www.wipo.int/treaties/en/documents/word/h-hague.doc.
At this stage, it appears that IP Australia is in no hurry to sign up to the Hague system and is happy to apply a wait and see approach. However, we note that at the very least, it is considering extending the maximum period of protection from its current 10 to 15 years, which is closely aligned with most other jurisdictions.
GRACE PERIOD
A grace period for patent applications was introduced on 1 April, 2002, to protect patents from invalidation by publication of the invention by, or with the consent of, the patent applicant or owner during a 12-month period prior to the filing date of the complete application. However, due to a lack of any such provision in the European Union and other key markets such as Japan, applicants tend not to rely upon the grace period provision. For this reason, IP Australia suggests that the adoption of a grace period for design applications may not be similarly accepted.
It should be noted however, that in contrast to the European patent system, S13 (5) & (6) of the European Registered Designs Act 1949 provides a one-year grace period for community design applications in the European Union. Similarly, the United States has a one-year grace period because designs are included within their patent system.
FEES
Whilst the new Designs Act permits the filing of a single design application encompassing multiple designs, the present official fee structure is calculated on the number of designs, rather than the number of applications. Accordingly, the cost of filing a single application covering, for example, 11 designs would be the same as filing 11 individual design applications.
For this reason, under the current fee structure it is often preferable to file individual design applications rather than a single multiple-design application. This approach has the added advantage of providing flexibility during prosecution of the applications.
Any reduction in the official fees for multiple applications would therefore potentially encourage the filing of more multiple-design applications.
STATEMENT OF NEWNESS AND DISTINCTIVENESS
Under the new Designs Act 2003, a design must be new and distinctive when compared to the prior art base existing at the priority date. To that end, a Statement of Newness and Distinctiveness (“SND”) was introduced to identify visual features of the design that are new and distinctive.
While lodgement of a SND is not mandatory, it may be useful in theory for highlighting visual features of the design and/or dismissing features on the representations that do not form part of the design. Further, the Designs Act requires the SND to be considered when assessing substantial similarity with another design.
Presently, section 66(3) of the Designs Act 2003 allows the scope of the design registration on the register to be amended if grounds for revocation of the design registration have been made out. In other words, Section 66(3) allows the scope of the design to be narrowed if the Designs Office considers any prior art found during examination to anticipate the design.
As design applications are now only examined in an optional post-registration certification, a problem arises if the SND is found to be too broad. That is, because the SND does not form part of the design registration on the register, it cannot be amended post-registration in accordance with section 66(3). Also, it should be noted that a SND cannot be added post-registration.
Therefore, with no mechanism provided to amend the SND post-registration, there is a possibility that an overly broad SND may be detrimental to the validity of a design registration if it is contested in court proceedings.
For this reason, we encourage our clients to identify the novel features of their designs when instructing us to file design applications on their behalf. We can then choose to highlight these features by means other than a SND if we believe it is appropriate.
CONCLUSION
With the release of the Emerging Issues report, IP Australia has signalled its intention to improve the implementation of the current Designs Act via consultation with system users and local practitioners.
As a result, in the short to medium term, it seems likely IP Australia will consider increasing the maximum period of protection, adopting a grace period and reviewing the official fee structure for multiple design applications. In the longer term, we believe IP Australia will be maintaining a close watch on those jurisdictions that have already adopted the Hague System with the aim of determining its ultimate suitability to Australian practice.
However, in relation to the potential problems with the SND, IP Australia is refusing at this stage to consider any changes.
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