IMPORTANT CHANGES TO AUSTRALIAN DESIGN LEGISLATION

There are important changes to the Australian design registration system that will commence on 10 March 2022. Other important changes that have already commenced. Below is our easy-reference outline of the changes most likely to affect you.

New Grace Period

Commencement: prior disclosures on or after 10 March 2022

There is presently no grace period in Australia’s design registration system. From 10 March 2022 it will be possible to take advantage of a new 12-month grace period for design protection after the publication or use of a design. Importantly, the grace period will only apply to publication or use of the design that has been made by the owner or by someone who obtained the design from the owner. This means publications by foreign Designs Offices will not fall under the grace period provisions. The new grace period will protect design owners, or their assignees, from losing their rights through disclosures of their design provided an Australian design application is filed within 12 months from first disclosure.

The new 12-month grace period applies to any publication or use that occurs on or after the commencement date. This means that any publication or use occurring from now up to 10 March 2022 will not fall under the grace period provision.

BOSH IP welcomes this change because it offers safety net protection to users of the design system. This change is specifically introduced for inexperienced users of the designs system but will also benefit experienced users who may choose to ‘test the waters’ first by deferring design protection. Furthermore, the 12-month grace period falls in line with similar grace periods for the UK, Europe and the United States. China does not currently have a grace period for design disclosures.

Prior Use Infringement Exemption

Commencement: third party prior use conduct on or after 10 March 2022

A new Prior Use Infringement Exemption provision will protect third parties against infringement proceedings if they start to make or sell a design before the priority date of the design registration, or had taken definite steps to do so. Under this provision, even though a design may be validly registered, third parties can avoid infringement for conduct before the priority date. This provision takes effect for third party acts after 10 March 2022.
 
The introduction of this provision protects the rights of third parties that have independently created an identical design or one that is substantially similar.  Furthermore, this provision aims to protect the rights of third parties who start to use a design that has been publicly disclosed during the grace period but have no way of knowing if that design will be registered under the grace period provisions. It will be important to keep good records of design development before the priority date to confidently take advantage of the infringement exemption.
 
This provision counterbalances the new grace period provisions: although the grace period provides interim protection, design owners are urged to register their designs as soon as possible otherwise third parties can take advantage of the infringement exemption.

Delayed Publication

Commencement: designs filed on or after 10 March 2022

Presently, an Australian design is published soon after the design is registered, which can take as little as 1-2 months from filing. IP practitioners employ a range of measures to delay registration and publication if it is important to do so. Changes to the Designs Act commencing will allow registration and publication of design applications to be easily delayed by 6 months (although early registration/publication will still be an option). BOSH IP welcomes this change as it provides design owners with greater flexibility to keep their design a secret until they are ready to go public.

Innocent Infringer Defence

Commencement: designs registered on or after 10 March 2022

A new provision providing relief from infringement between filing an application and registration will allow the Court to provide discretionary relief to innocent infringers in this period, namely people who were not aware that the design was undergoing a registration process because the design had not yet been published. However, this discretionary relief is not intended to provide continuing immunity from infringement after registration.

Right of Exclusive Licensees To Bring Infringement Proceedings

Commencement: infringing conduct on or after 10 March 2022

A new right is to be introduced that will provide an exclusive licensee with the legal standing to take infringement action through the courts without needing to rely on the registered design owner. Currently, only a registered owner of a design has standing to commence infringement action.  Practically, this gives local exclusive licensees the right to commence legal action where, for example, the foreign-based owner may not be motivated to do so.

Standard Of The Informed User

Commencement: 11 September 2021

Changes have already been introduced to clarify the legal standard used to assess design registration and infringement (formerly referred to as the ‘standard of the informed user’).  The changes have been introduced to ensure consistency with recent Australian case law and clarify that the standard of a person deciding whether a design is substantially similar to another design must be a person that is familiar with the product to which the design relates, but not necessarily be a user of the product.  Reference to an ‘informed user’ has been removed and replaced with reference to a ‘familiar person’. Practically, this change is not expected to make any impact to the legal standard for assessing registration or infringement but makes it clearer what that standard should be.

For more information visit IP Australia here.

BOSH IP is an Australian IP firm specialising in strategic advice and management of patents, designs and trade marks.

Innovation Patents : The Final Curtain

The Australian Government is phasing out the innovation patent. Wednesday 25 August 2021 marks the beginning of the end of the innovation patent.

Why?

In 2001 the innovation patent was specifically introduced for the benefit of small and medium enterprises (SMEs) as a cost-effective means of obtaining patent protection. The Australian Government believes the innovation patent has not fulfilled its objectives for SMEs and has instead been misused by big businesses. Whether or not you agree with this sentiment, there is only a limited amount of time after which innovation patents will not be accessible.

Innovation patents in brief

Innovation patents form the second tier in a two-tiered patent system in Australia. By comparison to the standard patent, innovation patents have a shorter term of 8 years (the standard patent term is 20 years) and a lower inventive threshold requiring novelty and only an ‘innovative step’ to be enforceable.

An invention is taken to involve an ‘innovative step’ unless it only varies from the prior art in ways that make no substantial contribution to the working of the invention. This means that an innovation patent can be awarded for inventions that are obvious but make a substantial contribution to the working of the invention. By this test innovation patents are inherently easier to obtain and more difficult to invalidate compared to standard patents. The unpretentious innovation patent, in fact, confers quite strong IP rights.

For these reasons an innovation patent can play a strategic part in a patent portfolio.

25 August 2021

That is the final date by which an innovation patent can be filed. After 25 August 2021, innovation patents will not be permitted. And it will take 8 years for the last of the innovation patents to run their course to expiry.

The following summarises the strategies you can use to take advantage of the innovation patent system before it is phased out.

By 25 August 2021 you can:

              A.      File an innovation patent application. This includes a new innovation patent application, or an innovation patent application based on an Australian provisional application or a foreign convention application;

             B.      File a standard patent application and use it later to springboard an innovation patent.  A standard patent application filed before 25 August 2021, either directly or via the PCT, can be used after 25 August 2021 in two ways to nonetheless take advantage of innovation patent protection by:

    1.      Filing a divisional application for an innovation patent from the standard patent application; or
    2.      Converting the standard patent application into an innovation patent application.

The standard patent application must be pending or newly accepted at the time of division or conversion to an innovation patent application. And either way, the 8-year term of the innovation patent will start ticking from the filing date of the standard patent application.

What you need to do

If an Australian innovation patent could be useful to you or your clients, act now before you miss the boat. Our main take-home points are:

  • If you have an invention you are thinking of patenting, don’t wait; file an innovation patent application by 25 August 2021. This may mean skipping the usual step of filing a provisional application first.
  • If you have a pending Australian provisional application, you need to complete the application process by filing an application by 25 August 2021 for either an innovation patent or a standard patent.
  • If you have an overseas priority application, you need to file either a standard patent or an innovation patent application in Australia by 25 August 2021 claiming convention priority. Alternatively, you could file a PCT application designating Australia by 25 August 2021.
  • If you have a pending PCT application, you are safe for now because the PCT filing date is recognised in Australia as the filing date of a standard patent. Just be sure to enter national phase in Australia by the 31-month PCT national phase entry deadline.

For more information visit IP Australia here.

BOSH IP is an Australian IP firm specialising in strategic advice and management of patents and designs.