Analysis of the new rules on exclusion clauses for design registration in Australia

In the latest official document, IP Australia has detailed the new rules on excluded designs in design registration. Many professional stakeholders are concerned that excluded designs submitted before the initial application is amended may not comply with the requirements of the Designs Act 2003 and the Designs Regulations 2004, which may result in the loss of rights in certain circumstances. In response, IP Australia has given a series of opinions and guidance.

The main points include:

• (i) In accordance with the compliance requirements of the Act, an exclusionary design application shall be electronically filed after or concurrently with the filing of a request to amend the initial application.
• (ii) For currently filed excluded design applications (and subsequent registrations), even if there are violations of the Act – such as filing documents in the wrong order – the excluded design will not be invalidated. Such designs will still be considered validly registered excluded designs and can claim priority from the initial application.
• (iii) As an abundance of caution, where current excluded design applications can be resubmitted to ensure compliance, they should be resubmitted. The Registrar will proactively contact the relevant applicants and invite them to resubmit their applications (and withdraw the original erroneously submitted applications) and waive the original application fee by refunding it.
• (iv) If the initial application has been withdrawn, or the design therein has been registered, it is not appropriate to apply for an extension of time to file or re-file an excluded design application under section 137. However, the applicant may still file a request for an extension of time, which the Registrar will consider in accordance with the law. Such an application for an extension of time should be made before processing of the excluded design application is resumed (see below).
• (v) The Registrar intends to resume processing excluded design applications from May 16, 2025.
• (vi) It is the applicant’s responsibility to ensure that the amendment request is submitted in the correct order with the exclusionary design application. The three-business-day delay in processing the amendment request should provide sufficient time for the subsequent submission of the exclusionary design.

This announcement undoubtedly adds new difficulties to the complicated design registration process for companies and individuals engaged in design protection in Australia. For companies, especially those registering designs in Australia for the first time, they need to pay special attention to these new regulations to avoid losing their rights due to improper procedures.