Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 - Commentary on Ministerial Responses [2021] AUSStaCSBSD 13 (29 January 2021)

• Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020
• Instruments not subject to parliamentary disallowance 12

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Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020

Purpose	This bill seeks to make several technical amendments to simplify and clarify aspects of the design system, and to provide more flexibility for designers during the early stages of registering design protection
Portfolio	Industry, Science and Technology
Introduced	Senate on 2 December 2020
Bill status	Before the Senate

Instruments not subject to parliamentary disallowance ^[12]

2.32 In Scrutiny Digest 18 of 2020 the committee requested the minister's advice as to:

• why it is appropriate to specify that determinations made under proposed section 149A are not legislative instruments; and

• whether the bill could be amended to provide that these instruments are legislative instruments to ensure that they are subject to appropriate parliamentary oversight.^[13]

Minister's response^[14]

2.33 The minister advised:

I trust the following will address the Committee's request for advice. If the Committee accepts these submissions and considers it appropriate, I will arrange for an addendum to the Explanatory Memorandum incorporating the reasoning set out in this letter.
Why it is appropriate to specify that determinations made under proposed section 149A are not legislative instruments?
Proposed subsection 149A(3) of the Bill provides that a formal requirements determination under subsection 149A(1) is not a legislative instrument. The determination would not be a legislative instrument under the definition in section 8 of the Legislation Act 2003 (Legislation Act). Subsection 149(3) confirms – for the benefit of readers, and the avoidance of doubt – what would be the case in any event. It does not have the effect of declaring the instrument is not legislative when it otherwise would be.
Subsection 8(4) of the Legislation Act provides that an instrument is legislative if it has the effect of determining the law or altering its content, rather than determining particular circumstances in which the law is to apply (i.e. is administrative in character). Instruments that do not fulfil the definition set out in subsection 8(4) of the Legislation Act are likely to be administrative in nature.
The power to make a determination of formal requirements is similar to the power to prescribe or approve a form, which is expressly non-legislative under item 6 of regulation 6 of the Legislation (Exemptions and Other Matters) Regulations 2015. This strongly suggests that the determination of formal requirements is also non-legislative.
Essentially, formal requirements ensure that applications are made in a suitable form to be registered. They do not materially determine the law regarding registration of a design. The substantive requirements for a design to be registrable are determined by the Designs Act 2003 (Designs Act) and Designs Regulations 2004 (Designs Regulations). Of course, any changes to the Designs Act or Designs Regulations would be subject to parliamentary scrutiny.
While a failure to comply with the formal requirements determination could result in an application not being registered under sections 39 and 40 of the Designs Act, a design applicant would have an opportunity to amend their application under section 28 to resolve the issue before this occurred.
I would also like to advise the Committee that the Administrative Law Section of the Attorney-General's Department was consulted during drafting of the Bill, and was of the view that an instrument made by the Registrar determining the formal requirements of design applications under proposed section 149A would be administrative in character.
Under the Designs Act, the Registrar of Designs has existing powers to make non-legislative determinations of formal and procedural matters, including under sections 144A, 144B and 144C. These powers are closely analogous to the proposed power to make a determination of formal requirements in the Bill.
Further, the Commissioner of Patents was recently granted the power to determine formalities requirements for patent applications by the Parliament: section 229 of the Patents Act 1990, inserted by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018. The new power in section 149A is analogous to this power to make a non-legislative determination.
Viewed in the context of existing powers in Intellectual Property legislation and the provisions of the Legislation Act, the determination under the proposed section 149A is non-legislative. Therefore, the specification that it is non-legislative in proposed subsection 149A(3) is intended to be a clarification and should be considered appropriate.
Whether the bill could be amended to provide that these instruments are legislative instruments to ensure that they are subject to appropriate parliamentary scrutiny?
It would not be appropriate to provide that the formal requirements determination made by the Registrar of Designs is a legislative instrument, as it is administrative in character.
Use of a non-legislative instrument to set formal requirements will enable these requirements to be more readily updated and kept up to date as technology advances, and will give greater flexibility to the Registrar to manage design filings in a manner that meets the needs and expectations of design applicants.
IP Australia conducted a public consultation on an exposure draft of the Bill, and stakeholders who commented on the measure were supportive of proposed section 149A's power to make a formalities determination, and did not express any reservations about the potential lack of parliamentary scrutiny of such a determination.

Committee comment

2.34 The committee thanks the minister for this response. The committee notes the minister's advice that the power to make a determination of formal requirements is similar to the power to prescribe or approve a form and is therefore non-legislative in character. The committee also notes the minister's advice that formal requirements ensure that applications are made in a suitable form to be registered. These formal requirements do not materially determine the law regarding registration of a design with the substantive requirements for a design to be registrable being determined by the Designs Act 2003 and Designs Regulations 2004.

2.35 The committee thanks the minister for indicating that she will arrange for an addendum to the explanatory memorandum incorporating the reasoning set out in her letter to be tabled in the Parliament. The committee would welcome the tabling of an addendum as soon as practicable, noting the importance of these explanatory materials as a point of access to understanding the law and, if needed, as extrinsic material to assist with interpretation (see section 15AB of the Acts Interpretation Act 1901).

2.36 In light of the detailed information provided, the committee makes no further comment on this matter.

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[12] Schedule 6, item 4, proposed subsection 149A(3). The committee draws senators’ attention to this provision pursuant to Senate Standing Order 24(1)(a)(v).

[13] Senate Scrutiny of Bills Committee, Scrutiny Digest 18 of 2020, pp. 6-7.

[14] The minister responded to the committee's comments in a letter dated 22 January 2021. A copy of the letter is available on the committee's website: see correspondence relating to Scrutiny Digest 1 of 2021 available at: www.aph.gov.au/senate_scrutiny_digest.