Design Grace Period Finally Arrives in Australia

engineering design on laptop

(Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021)

Following our update on the upcoming changes to the legislation that governs registered designs in Australia in February of this year (see here), the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Act) received Royal Assent on 10 September 2021.

The Act introduces a raft of changes and we have summarised the most important amendments for you below.

Schedule 1 – Grace Period

From 10 March 2022, designers will be protected from the disclosure of their design before filing a design application, regardless of whether the disclosure was intentional, accidental or made without the designer’s knowledge or permission, as long as a design application with a priority date is filed within 12 months of the first disclosure.

There are some important exemptions to this new provision. In particular, publications of designs by the Registrar of Designs (i.e. IP Australia) and foreign or international designs offices will not be disregarded during examination of a later filed design and therefore will not be protected by these grace period provisions.

Schedule 2: Infringement Exemption for Prior Use

Schedule 2 introduces an infringement exemption which was deemed necessary in light of the introduction of the grace period provisions explained above.

The exemption protects third parties against infringing someone else’s design, where the third party has started using a design before the priority date of a registered design.

Importantly, this exemption applies if the third party creates the design independently of the registered design, or if the third party copied the registered design from a disclosure by the design owner before the priority date of the registered design. 

This exemption is intended to balance the rights of designers and third parties who use a design prior to an application for a design registration being filed as those third parties may not be aware of a designer’s intention to file a design application using the grace period.

These changes provide improved accessibility to design rights for those who have, inadvertently or otherwise, disclosed their design before an application for a registered design has been filed. The changes also more closely align Australian design law with the law of our major international partners (such as the USA, Canada, the UK and Europe).

Please contact us if you would like further information on The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021, and what it means for you, your business and your IP portfolio.