D07.4 Designs disclosed in applications

Date Published

In addition to documents published before the priority date, the prior art base also includes design applications having an earlier priority date but published on or after the priority date of the application. This is a manifestation of a 400 year-old principle that only one monopoly right should be granted for a single innovation. This provision ensures that designs that have an earlier priority have precedence over later designs – even if the earlier design was not published before the priority date of the later design.

The precise requirements for an earlier design application being part of the prior art base [see s.15(2)(c)] are:

  • the design is disclosed in a design application;

Note: the application must be in the Australian Designs Office. Applications made in other offices are not relevant – except insofar as they establish a priority date for an Australian application.

  • the design has an earlier priority date than the designated design;
  • the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.

Particular points to note with this provision are:

  • The earlier application is not part of the prior art base until such time as it is published – either following registration or s.57 publication (such that s.60 applies). Note that there is no requirement that the earlier design be registered.
  • If examination of the latter application occurs before publication of the earlier application, no objection based on the earlier application can be raised. In particular:
    • the requisite element that the earlier application be published has not been satisfied (so that there is no objection) and
    • raising the objection would almost certainly be an effective publication of the earlier application in contravention of s.61.

Note: Because the file of the design being examined is open to public inspection, a file note referring to that earlier application will likely constitute an effective publication of that design – contrary to the intent of s.61. Consequently no file notes referring to unpublished potential citations are to be made.

  • The objection does not distinguish on the basis of applicant or owner. That is, earlier applications by the owner can give rise to the ground of objection.
  • The status of the earlier application (lapsed or not lapsed) is irrelevant. All that matters is whether it has been published.
  • Where at the time of certification the earlier design application has not been published, a Certificate of Examination can proceed to issue. However if the earlier design is subsequently published the ground of revocation is enlivened. The fact that Certification has occurred does not avoid the ground of revocation.
  • The requirement under s.15(2)(c) is merely that of disclosure of the design – not that it is the subject of the earlier design application.
  • Where the earlier design application includes plural designs, the objection is dependant upon the publication of the particular design relevant to the later application.
  • A lapsed unpublished application with a priority date earlier than the priority date of the registered design being examined is not part of the prior art base. However if that application is restored (following an extension of time under s.137) and subsequently published, it becomes part of the prior art base and citable against any design having a later priority date.

D07.4.1 Transitional issues

The prior art base of s.15(2)(c) requires the designs to have been ‘disclosed in a design application’ [s.15(2)(c)(i))].

The dictionary to the Act defines a design application as ‘an application filed under s.21’. The transitional provisions of the Act do not treat applications under the 1906 Act as applications under the 2003 Act; s.153 expressly provides that the

old Act continues to apply to an application made under the old Act before the commencing day as if the old Act had not been repealed, unless a conversion request is made under s.159 in respect of the application.

Accordingly, a design application filed under the 1906 Act is not a design application within the meaning of s.15(2)(c)(i)), and cannot not form part of the prior art base for the purposes of s.15(2)(c). [See Reckitt Benckiser (UK) Limited [2008] ADO 5, para 2].

However if an applicant of an old-Act design converted that application using the provisions of s.159, that converted application is taken to be an application under the 2003 Act – s.160(1), and can form part of the prior art base for the purposes of s.15(2)(c).

About 94 old Act design applications were converted into about 200 new Act design applications.