D10.4 Allowabililty - inclusion of matter not in substance disclosed

Under both s 28 and s 66 of the Designs Act 2003 (Cth), and amendment is not allowable if it would:

Alter the scope of the {application/registration} by the inclusion of matter that was not in substance disclosed in the original design application, representation, or other documents.

[See s 28(3) and s 66(6)(b)]

Chris Ford Enterprises Pty Ltd v. B. H. & J. R. Badenhop Pty Ltd (1985) 4 IPR 485 at 498 concluded [in respect of s 22B of the Designs Act 1906 (Cth)]:

'It would seem that it is designed to exclude amendments which extend the scope in some fundamental way and make disclosures clearly beyond those already made. The terms of S22B(1A) are in a sense imprecise and call for the exercise of judgement. Reading the section as a whole it is proper to conclude that parliament intended genuine amendments reasonable in scope should be permissible and that the restrictive provision of S22B(1A) should be interpreted accordingly.'

In Invacare Corporation [2013] ADO 4 a request under s 66 for the product name to be amended (from “Wheelchair chassis” to “Front frame of wheelchair chassis”) was denied on the basis that a front frame was not disclosed in the product representations. The amendment would have altered the scope of in this case the registration by referencing matter not originally disclosed in the representations.

Some guidance on what is a ‘genuine amendment reasonable in scope’ may be ascertained from patent cases:

• Ethyl Corporation's Patent (1972) RPC 169, 'disclosed in substance' means either expressly disclosed or impliedly disclosed. Impliedly disclosed means that it would be implied by the informed user.
• AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 (High Court):

'....... The substance must appear from the language itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior state of the art to which the claim relates.'

To put these decisions into the context of designs: the substance must appear from the original design application, representation, or other documents, interpreted in a normal manner and from the perspective of an informed user.

Consequently while the requirement essentially requires explicit disclosure, exact disclosure is not required. For example, an amendment to change a representation from a plan view to an isometric view would be allowable – provided the isometric view did not disclose features that were not present in the plan view. Similarly, making explicit those details that an informed user would necessarily imply from the representations would be allowable.

Note: This issue can be illustrated in the context of assessing the disclosure in citations. World of Technologies (Aust) v Tempo (Aust) [2007] FCA114 at paras 60 and 61 raises a situation where the information in a citation was insufficient to support a lack of newness, but the citation established lack of distinctiveness. The ‘missing’ information for the ground of lack of newness could not have been in substance disclosed in the citation – as otherwise the ground of not new would have applied.

The test for ‘in substance disclosed’ is applied with reference to the disclosure in ‘the original design application, representation or other documents.’ That is, any document filed as part of the application. This would include (for example) the covering letter, and any statements of newness and distinctiveness. And there is no time restriction – such that a disclosure in a covering letter could be used as the basis for an amendment many years after registration and certification.

Additionally, where a single design application is filed containing plural designs, the assessment of ‘in substance disclosed’ is made having regard to the disclosure in all those designs – irrespective of whether the files of the other design applications are open to public inspection.

Note 1: Where a request to amend depends on a disclosure associated with a different design (either by express inclusion, or by way of argument) and that other design has not been registered or published, a copy of the material being referred to is to be placed on the current file to ensure its public availability in association with the current file.

Note 2:  If the applicant

*  amends under s 28 to delete certain designs (irrespective of whether a new application is filed under s 23); or

*   withdraws one or more designs under s 32

those designs were nevertheless disclosed in the original design application, and may provide the basis for amendment.

In theory, the situation could arise where an amendment including matter not in substance disclosed was incorrectly allowed. If there is a subsequent amendment for another purpose that happens to contain that same material (e.g. substitution of representations containing the previous amendment together with a new amendment), no objection to the previous amendment can be made. The amendment considerations under s 66(6)(b) are limited to whether the ‘current’ amendment has the effect of including matter not in substance disclosed.

While the same considerations apply for pre-registration amendments under s 28, in practice that situation is extremely unlikely to occur.