ACIP Releases Options Paper For Designs Act Review, Calls For Submissions
Tuesday 9 December 2014 @ 10.33 a.m. | IP & Media
The Advisory Council on Intellectual Property (ACIP) has just released the latest stage of its review of the Designs System. Commissioned in 2012, the review asked ACIP to review the operation and effectiveness of the Designs Act 2003 (Cth), and was a response to a variety of concerns raised by stakeholders about whether the Act is meeting its original policy objectives, particularly given the rapidly changing technological landscape. ACIP released an Issues Paper in September 2013, and held a series of public roundtable discussions between October 2013 and December 2013. The newly released “Options Paper” is the next stage of the process, and puts forward three options for revising the 2003 Act, ranging from a “minimal approach” to a “wholesale revision” of the designs system. ACIP are calling for public comment on the Options Paper before 23 January 2015.
Findings So Far
To date, ACIP has concluded that “evidence on the impact of the 2003 Act is mixed”. The paper says:
“Use by Australian companies is largely static (in the context of a strong rise in use by overseas companies), and use by Australian individuals has undergone a steep decline. There is no evidence to suggest a significant decrease in overall costs of using the system. There is anecdotal and empirical evidence of a slight rise in confidence in the enforceability of rights.”
ACIP believes there is room for improvement on the certain specific legal details. Another concern ACIP has is that in comparison to other countries, “[t]he scope of the legal monopoly that can be obtained through an Australian Registered Design is both narrow, and short by international standards.”
They are also aware of the wider technological landscape changing, and note that:
“technology is transforming the nature of design and making ‘virtual’ or software designsmore important, but design protection is tied to whole, physical products. Further, 3D printing and scanning technologies enable online circulation of designs but such activities are not captured by design law and, in at least some cases, copyright may be of no assistance.”
Option One
The minimal approach would be to simply address certain specific legal issues, which ACIP has identified as “anomalies”:
- 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;
- 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 Two
Option Two would incorporate those changes as well as aiming to bring Australian law more in line with that of major trading partners, particularly on matters of detail and procedure. Australia would also consider whether to join the Hague Agreement under the World Intellectual Property Organization. ACIP says that “[t]he benefits of the Hague Agreement at this point in time are limited owing to only limited international design law harmonisation, but joining Hague could see Australia more involved in making it an effective system.” Australia would, however, need to extend the maximum term of protection to 15 years (from 10 years) if it takes this route. ACIP also suggests introducing a grace period of six months, allowing Customs to seize some kinds of infringing material and making some amends to the treatment of virtual designs.
Option Three
The most dramatic option, ACIP says this would be a complete revision of the policies reflected in the current Act. They note that other jurisdictions provide much broader registered design rights that may include “partial designs” (e.g. a cup handle regardless of the shape of the cup),or even “full copyright protection for all artistic works regardless of “industrial application”. ACIP says feedback to their review so far “suggests that the current Australian system is expensive for what it offers, and is, as a result, neglected by designers who find it doesn’t offer the rights they need.” However, ACIP notes that this option potentially involves much greater costs on the industry, and they also acknowledge that presently, stakeholders are lacking education about intellectual property law, concluding that:
"[a]rguably, there is little point in significantly expanding the legal options for designers without simultaneously ensuring that Australian designers have the legal knowledge and resources to takeadvantage of any new rights."
They also stress that a wholesale review would need to cover more than just designs, but would need to consider interaction with the copyright and patents system, and said that “specialist intellectual property economic, business and legal analysts” would need to be involved.
Final Submissions to the Review are due by 23 January 2015.
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