Changes May be Coming to Australian Design Right Laws

Feb 16, 2021 3 min read

Proposed amendments to the Australian design right laws are currently before Parliament for consideration and include 1) a 12-month grace period, 2) a prior use defense, and 3) an expansion of rights for exclusive licensees. If accepted, the proposed amendments may provide more flexibility for designers and companies seeking design registrations and for companies defending against an infringement action in Australia.

More specifically, the proposed amendments include a 12-month grace period, which would allow a company to file a design patent application within a year of their own public disclosure without the disclosure being usable as novelty destroying prior art. While it remains preferable to file an application before any public disclosure, this grace period would provide some leeway if there was an inadvertent disclosure.

Also proposed is a prior use infringement defense. Under this defense, someone who starts using or selling a product after another party’s public disclosure but before filing by that party, would have a defense to infringement from that party on a design patent if they continue using or selling the product.

Another proposed change would expand rights afforded to exclusive licensees. Currently, only the owner of the design right can bring an infringement action in Australia. Under the proposed changes, an entity that has licensed all of the rights to the design would also be permitted to bring an infringement action.

We will continue to track the progress of these proposed amendments and provide further updates.