Australian designs under review

As many practitioners would be aware, the Australian Designs Act 2003 is currently under review by the Advisory Council on Intellectual Property (ACIP), in order to determine its effectiveness since implementation in 2004. Shelston IP has been assisting ACIP with this review and to date we have made comments and recommendations along the following lines.

Deferred publication

Implementation of the new Designs Act in 2004 removed the requirement for substantive examination of designs before registration. As a result, designs are now typically being registered and published within a matter of weeks. In some circumstances, this expedited publication can be commercially undesirable to many applicants.

According to current Australian law, the only formal delaying provision is to not file a request for registration. However, since the deadline to request registration is only six months from the priority date, having the ability to not request registration is a generally useless provision for ‘Convention’ applications, which are typically not filed until six months from the priority date.

In an attempt to circumvent this difficulty, many practitioners have taken to deliberately filing deficient applications thereby triggering adverse Formalities Notices and delaying registration by up to two months. We believe this negative practice is far from ideal and we would like to see a formal mechanism for delaying publication, such as extending the six month registration deadline or introducing a deferred publication option post-registration.

Grace period

Currently Australia has no grace period for filing design applications. This is out of step with other mainstream jurisdictions such as Europe and the United States and we would like Australia to have some form of similar provision. We believe a twelve month grace period that aligns with Australian patents would be useful and appropriate.

Term of registration

Under the 2003 Act, an Australian design registration has a maximum life of 10 years subject to payment of a single renewal at the five year anniversary. This again differs greatly from other mainstream jurisdictions such as Europe (25 years) and the United States (14 years). Given the free trade agreement between Australia and the United States and resulting alignment in other areas of IP law, we believe it would be beneficial to increase the period of protection to at least 14 years.

Multiple designs

The basis for the ability to have multiple designs in a single Australian design application stems from the Australian government’s acceptance of the Australian Law Reform Commission’s (ALRC’s) recommendation during the preparation of the Designs Act 2003. However, IP Australia will openly admit that while it is possible to have a multiple designapplication, there is really no such thing under the Act as a multiple design registration.

To explain further, upon registration each design in a multiple design application is issued a unique design number exactly as would occur if filed as a separate application. IP Australia’s computer and administration systems are simply unable to treat the multiple designs in a single application in the same way as they do, for example, in Europe. These unique numbers are still referenced after registration for renewals and for post-registration prosecution and therefore must be monitored separately.

It should also be noted that the ALRC’s supplementary recommendation for a reduced filing fee for simultaneously filed multiple designs was not adopted and, under current law, the same official fee is charged for each design. The result of all this is that under current Australian design law there would appear to be no real advantage in having the ability to file more than one design in a single application.

For these reasons, we have requested ACIP to review Australian multiple design system as it presently stands as there are no real benefits and hence promoting this option can, in some circumstances, be misleading. That said, Shelston IP has addressed at least part of these insufficiencies by offering clients a significantly reduced service charge when multiple designs – whether they be in a single application or multiple applications – are filed at the same time.

Online systems

On the plus side, we are happy to see that IP Australia’s online systems have now been extended to design applications. Specifically, we are happy to the see the end of the outdated requirement for multiple paper copies of the representations when filing a design application. We also hope that enabling direct uploading of higher resolution images of the design representations will eliminate the risk of any reduction in quality as may happen during the Designs Office’s paper scanning process.

We await the outcome of ACIP’s review and are hopeful that IP Australia and the Australian Government act on their recommendations.