Pending design applications may be converted to new act applications
Design applications pending when the Designs Act 2003 came into force on June 17 may be examined under the new statute rather than the Designs Act 1906. However, applicants may find it difficult to make a decision as to whether to convert their applications as each statute presents advantages and drawbacks.
The feature of the new act most likely to attract conversion is its broader definition of infringement when compared to that in the Designs Act 1906. On the downside, validity of a design registered under the new act will be tested against a prior art base that has been extended to include worldwide documentary disclosure. Also, the term of registration will be a maximum of 10 years (compared to 16 under the previous act). However, this latter feature may not be as off-putting as it looks as (i) statistics issued by IP Australia indicate that most Australian designs are not renewed beyond 10 years, and (ii) it is hoped that the government may reconsider the 10-year term in favour of a longer term more consistent with international norms - probably 15 years.
Indeed, it is even possible that the government may be forced to take into account the terms of international agreements, such as the free trade agreement between the Australian and US governments that requires Australian IP law to be brought more into conformity with US law (see AUSFTA will have an impact on IP issues).
Another factor to consider by those tempted by a conversion is that the new act provides for certain exemptions to infringement of a product supplied as a spare part for the purposes of repair.
For a background discussion of the features of the new design act, see Reform of Australian design law approved.
Raymond Hind, Davies Collison Cave Solicitors, Melbourne
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