D07.2 Publicly used in Australia

S.15(2)(a) refers to ‘designs publicly used in Australia’. That is, actual application of the design to products rather than documentation illustrating the design. To establish a ground of revocation based on prior public use, it is necessary to establish:

• what was actually used;
• when that use occurred; and
• the use was a public use.

In examination before the Registrar, there are serious potential difficulties in establishing a prior public use of a design. In particular, an assertion by a third party, whether that be by way of statement, declaration of affidavit, is no more than an assertion – it is not proof of that use, or of the details of the use. Conclusions about prior use would usually only be reached after hearing evidence from both parties, with witnesses being potentially subject to cross examination. Consequently if the issue is raised in examination, it may be the case that it can only be properly dealt with by way of a hearing under s.67(3). In any event, the ‘proof’ of any prior public use will need to be clear [see, for example, Seiller's Application, [1970] RPC 103].

In limited circumstances it might be possible to clearly establish the elements of the prior use by way of documentary material. For example, a newspaper report published after the priority date reporting a demonstration that occurred before the priority date. However care needs to be taken to ensure that all elements necessary for this ground of revocation are in fact properly established.

For a use to be a public use, the use must have taken place in a manner where a member of the public would have been freely able to ascertain the design. Note that it is not necessary to establish that any such person actually ascertained the design – it is enough to show that a person could have freely ascertained the design.

Where the use occurs before people who have all made confidentiality undertakings, that use is not a public use. Note that where the use occurs before fellow employees, there will usually be implied confidentiality arising from the fiduciary obligations of the employees to the company.

Publication by use at an Exhibition may be excluded from the prior art base – see D07.5 Exhibitions.

Where the issue is raised in a request for examination, and the examiner is satisfied that if the assertions are true a ground of revocation exists, the examiner will raise the ground of revocation. The issue of whether the ground of objection will be maintained will depend on the response by the owner – and in particular whether the owner raises any credible elements of doubt about the assertions of the prior use. Where there is a credible element of doubt, the benefit of that doubt must be given to the owner – noting that the issue can be properly dealt with under a s.67(3) hearing.