Review of the Designs System
The Advisory Council on Intellectual Property (ACIP) has completed its review of the operation of the Designs Act 2003 and released its final report which can be viewed here.
The report recognises the desirability of working toward greater harmonisation with international treaties and practice in design protection. Areas where the effectiveness of current legislation could be enhanced have also been identified and ACIP has made 23 recommendations. These include:
- Extending the maximum term of protection of designs to 15 years, but only if a decision is made to join the Hague Agreement
- Requiring a request for substantive examination of the design by the first renewal deadline (five years)
- Introducing an opposition procedure following certification, but only if the preceding recommendation is accepted
- Improving the process for multiple design applications by reducing the fees for each additional design
- Automatic publication at six months after the filing date, but with the possibility to request earlier publication if desired, and amending the innocent infringer defence
- Allowing amendments to the Statement of Newness and Distinctiveness up to the point of certification
- Introducing a six month grace period prior to filing where disclosure of a design will not be included in the prior art, as well as a prior user defence
- Reconsidering treatment of virtual or non-physical designs such as screen displays, graphical user interfaces and screen icons
- Introducing Customs border protection mechanisms for certified designs to allow for seizure of alleged infringing products.