ACIP Designs Review Recommendations 18(b), 18(d), 18(e) and 18(g) (technical issues)

Issue summary

In its 2015 Review of the Designs System in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended a number of legislative amendments to address technical issues identified by stakeholders. Specifically, ACIP recommended:

• That international convention applicants are not disadvantaged in cases where formal requirements differ between jurisdictions, by expanding the rules relating to priority claiming (Rec 18b)
• That design registrations should be revocable on the basis of a lack of entitlement at the time of the revocation proceeding (rather than at the time of registration) (Rec 18d)
• The prior art base against which newness and distinctiveness is considered should be expanded to include designs for products other than the product the subject of the registered design (Rec 18e)
• The opportunity to amend should be broadened to allow for amendment other than to overcome a ground of revocation (Rec 18g).

The government accepted the recommendations in May 2016 with the proviso that Australia will continue to comply with relevant international treaties and conventions and any change to the Designs Act 2003 does not result in an unintended advantage of one type of application (i.e. convention) over another type of application (i.e. non-convention claim).

History

• On hold 4 September 2017
• Consultation 31 October 2019 to 20 December 2019
• On hold 2 December 2019

Comments

We conducted a public consultation from 31 October to 20 December 2019 on policy issues being considered for inclusion in the Designs (Advisory Council on Intellectual Property Response) Bill 2020 (Designs Bill). 

As a result of our 2019 consultation, Recommendations 18(b), 18(d), 18(e) and 18(g) were given a low priority status due to stakeholder feedback.

Please refer to policy ID: 45 for further information about the implementation of related  Recommendations 18(a), 18(c) and 18(f) through the Designs Bill.

See policy ID: 46 for implementation of Recommendation 18(h) and policy ID: 61 for implementation of Recommendation 18(i) through the Designs Bill. 

Our reasoning can be found in our response to the consultation.