Jonathon Duniam (Tasmania, Liberal Party, Assistant Minister for Forestry and Fisheries) Share this | Link to this | Hansard source

I table the explanatory memorandum relating to the bill and move:

That this bill be now read a second time.

I seek leave to have the second reading speech incorporated in Hansard.

Leave granted.

The speech read as follows—

2RS - DESIGNS AMENDMENT (ADVISORY COUNCIL ON INTELLECTUAL PROPERTY RESPONSE) BILL 2020

This Bill continues the Morrison Government's commitment to improve the intellectual property system.

A well-functioning IP system fosters innovation and encourages the development of new ideas. The registered designs system aims to give the one point three million people working in design intensive industries the confidence to create new and innovative products. This Bill will improve the registered designs system to support this important sector, estimated to contribute 68 billion dollars annually to the economy, or more than three and a half per cent of our GDP. This Bill is just the first stage of the Government's ongoing program of designs reform, with more improvements to come after further consultation.

This Bill responds to a report by the former Advisory Council on IP. The report considered the effectiveness of the designs system in stimulating innovation, and its impact on economic growth. The government has consulted extensively on how to put the report's recommendations into effect and has listened closely to the views of stakeholders. As a result, the Bill's measures are broadly supported, and the government is confident that the proposals strike the right balance between the needs of designers, third parties and the broader public.

This Bill provides more flexibility for designers during the early stages of seeking design protection. It clarifies and simplifies the designs system. This in turn delivers timely benefits for designers affected by COVID-19, improving confidence and certainty to invest in our design economy.

The Bill amends the Designs Act 2003 to implement a grace period, or a safety net, to protect designers. At present, if a designer publicly discloses a design before applying for protection, they cannot get IP rights. The grace period will give designers 12 months to apply for protection after publicly using their design. This will help prevent designers losing out on valuable rights due to accident or a lack of experience with the system. The grace period also aligns Australia with many of our major trading partners, making it easier for our designers to seek protection overseas, and encouraging international designers to bring their work to Australia.

Australian businesses who have licensed exclusive rights for a design will now be able to bring infringement action, without needing to rely on the owner. When an exclusive licence design right is granted, it is often because the owner is based overseas. An overseas owner may not be interested in taking infringement action in Australia. This amendment ensures that exclusive licensees can enforce the rights they paid for, as is already the case for patents, trade marks and plant breeder's rights.

The Bill also simplifies the registration process for designers and reduces red tape. It will remove the rarely used option to publish a design application without registration. It will also make requests for registration automatic, after a fixed period, unless the designer indicates otherwise. As nearly all design applicants register their design rights, this change will streamline the registration process, reducing red tape, saving designers time and hassle.

To further streamline registration, the formal requirements for filing a design application will be moved out of the Designs Regulations and into a non-legislative instrument, made by the Registrar of Designs at IP Australia. This will ensure that the requirements can be amended to keep up with changing technology and commercial practice.

As well as delivering benefits for designers, the Bill will also implement safeguards to protect third parties in the design sector who are operating in good faith.

A prior use exemption to the infringement of designs will be created. This will safeguard third parties that start using a disclosed design during the grace period introduced by this Bill. This exemption protects businesses who have invested in a publicly disclosed design during the grace period, when they cannot know if the designer intends to seek IP protection.

The Bill will also extend the current innocent infringer defence so that relief is available from any time after the design's filing date. This reduces the risk of a design right being innocently infringed in the six months between its filing date and registration. During this time there may be no way to know that the design may be protected, as it is not yet published.

Finally, the Bill also makes a range of smaller technical corrections and improvements to the designs system. These include a change so that registrations should be revoked if acts of fraud, false suggestion or misrepresentation were committed during the certification of a design. Other amendments will improve procedural fairness where an applicant has made a mistake about the ownership of a design and will clarify some ambiguities in the Designs Act to reduce legal uncertainty.

I am very pleased to introduce this Bill, which will enhance our IP system and support the design sector which contributes so much to our economy, and to our quality of life.

Ordered that further consideration of the second reading of this bill be adjourned to the first sitting day of the next period of sittings, in accordance with standing order 111.