Proposed Australian Designs reform: Grace period HOT but GUI’s NOT

As we reported last year, IP Australia sought input on proposed changes to the Designs Act 2003.  Following a consultation in late 2019, IP Australia now propose to release an exposure draft of a proposed Bill and supporting regulations later in 2020 to:

  • introduce a grace period with prior use defence (presently, there is no grace period in Australia for the designs system, unlike the patent system for example);
  • remove publication option for registration of designs;
  • remove liability for infringement before registration; and
  • give exclusive licensees legal standing to sue for infringement.

Notably, IP Australia have decided not to take action with regard to virtual, non-physical and active state designs and whether IP protection will apply for new types of designs – including screen displays, screen icons and graphical user interfaces (GUIs).

More information as to the current state of play regarding GUI’s in Australia may be found here

IP Australia’s response to the consultation may be found here.

If you have any questions about the review of the designs system, please contact Mark Williams.

BCSE(Hons) MIP FIPTA

Mark’s academic background is in computer science and electrical engineering. He assists clients in obtaining and enforcing their intellectual property rights in the areas of software, electronics and engineering. Prior to joining Phillips Ormonde Fitzpatrick, Mark worked with a major Australian car manufacturer within their Current and Past Model Engineering group.