On 4 December 2014 the Australian Council on Intellectual Property (ACIP), an independent body appointed by the Australian Government to advise the Federal Minister for Industry on high level policy matters relating to IP, released an Options Paper for a Review of the Designs System (Options Paper). The Options Paper follows an inquiry into the Designs System commenced by ACIP in May 2012.
ACIP’s review has addressed three broad questions:
- Has the Designs Act 2003 (2003 Act) achieved its goal to provide a simple, cost-effective designs system that provides Australian designers with more effective rights?
- Are the legal mechanisms in the 2003 Act operating as intended?
- Should policy decisions be reconsidered in light of the operation of the 2003 Act, and international and technological changes in the intervening decade?
The Options Paper reports that ACIP has found that the 2003 Act has not significantly improved confidence as to the enforceability of registered design rights, and that some policy decisions embodied in the 2003 Act may warrant reconsideration.
ACIP has settled on three potential approaches to revising the 2003 Act:
OPTION 1 : making minimal amendments to the 2003 Act to address a range of identified anomalies, as well as four specific identified changes, namely:
- changing the terminology for a registered, but uncertified design to make it clear that the design does not, until certification, confer enforceable rights;
- removing the option of publication as an alternative to design registration;
- improving the process for multiple design applications to reduce the fees for each additional design added to the application, in accordance with the original proposal of the ALRC; and
- addressing anomalies that have arisen in relation to the copyright-design overlap, especially in relation to the boundary between two and three dimensional ‘embodiments’.
OPTION 2 : make the amendments recommended in Option 1, but also implement additional changes – principally to bring Australian law into line with that of major trading partners international treaties, while seeking to encourage innovation by Australian designers. Some of the specific changes suggested include:
- extending the maximum term of protection to 15 years;
- if so extended, requiring certification at the first renewal (5 years) and introducing a system of opposition following certification;
- introducing a grace period of six months, and automatically deferring publication to the point of registration (i.e. at 6 months); and
- introducing measures to allow for the seizure by Customs of alleged infringements which are identical to registered designs.
OPTION 3 : undertake a wholesale revision of the role of the designs system in Australia’s IP law, including consideration of:
- the need for protection of unregistered designs;
- the scope of design protection in the context of technological developments such as 3D scanning and printing, and whether protection should be extended to partial designs;
- whether virtual or non-physical designs (such as screen displays and icons) should themselves be treated as products; and
- whether there should be unregistered anti-copying rights in designs, or full copyright protection for all artistic works regardless of ‘industrial application’.
While wholesale reform (as proposed in Option 3) is not ACIP’s preferred option, the Options Paper notes that the Australian system is currently seen as expensive for what it offers and as not providing designers with the rights they need. The current system is often criticized for making it too easy to obtain a registered design, and too hard to enforce them. Wholesale reform may therefore appeal to many.
The Options Paper is available on the ACIP website here. ACIP is seeking submissions in response to the Options Paper by 23 January 2015, and will report to the Government in March 2015.