D13.2 S.29 disputes

Date Published

A dispute under s.29 can only arise prior to Registration. They are fundamentally of two types:

  • There are joint applicants for the design, and they cannot agree on whether, or in what manner the application should proceed.
  • There is a third party who asserts that they should be either a joint applicant, or the applicant for the Design. [see s.29(3)(b)].

D13.2.1  s.29 disputes – between co-applicants

Disputes between co-applicants are expected to be exceedingly rare – given the limited prosecution issues that can arise pre-registration. The following are examples of dispute situations that have occurred under the Patents Act [mainly under the Patents Act 1952] which may provide guidance.

  • a joint applicant refusing to sign a required document:
  • Application by Willems, Fritz, et al 21 IPR 569
  • Stephenson v Donner 24 IPR 108, (1992) AIPC 90-888
  • a person requesting the application proceed in their name only:
  • Carroll v Harper 1 IPR 537 - where one party did not fulfil its contractual obligations
  • Tribe v Ranken 1 IPR 561 - where application erroneously include the name of a second person.
  • Milward-Bason and Burgess (1988) AIPC 90-475 - involving breach of agreement, unauthorised assignment, and non-cooperation and inaction in instigating infringement actions and marketing.

Three decisions appearing in the RPC's, which may be useful to persons involved in sec 29 actions are:

  • Novocretes Ltd.'s Application 43 RPC 171
  • Lanfranconi's Applications 53 RPC 317
  • R&S Trailers Ltd.'s Application 60 RPC 7

The result of the s.29 procedure in these circumstances is typically a determination of the manner in which the application may proceed. In instances where the conduct of a party is designed to frustrate the prosecution of the application by the other party, a typical direction has been to delete (effectively or actually) that party as an applicant. In circumstances where the conduct of both parties has been questionable, the parties have been required to indicate their agreement on all future documents to be filed – with it being noted that the application would inevitably lapse unless the applicants could reach agreement between themselves. [Application by O’Neill and StGeorge 30 IPR 637]

With these disputes, the nature of the evidence required by the Registrar to resolve the dispute will be highly dependant upon the facts of the case. In some circumstances the parties may be quite cooperative in placing relevant material before the Registrar. In others one party may deliberately avoid communication with the Registrar. Thus the Registrar has no ‘normal’ process for handling the evidentiary processes – apart from ensuring that each party has a reasonable opportunity to both put their case, and to respond to the case of the other party.


D13.2.2  s.29 Disputes – another person claiming entitlement

S.29 can be used by a person asserting that they are an entitled person with respect to a design in the application. The potential result of a determination is a change in the applicants of the application.

Note: a s.29 determination does not lead to a new design application – just a change in the applicants.

Subject to the following, the practice and procedure for dealing with these disputes is the same as for disputes under s.52 – See D13.4 below.

There is a particular difficulty with applications under s.29, in that the design application is necessarily not OPI. Consequently in most situations the person making the request is doing so in ignorance of the actual content of the design application – acting (typically) on a strong suspicion based on past dealings between the two parties. But an argument about entitlement cannot be easily debated in ignorance of the designs actually disclosed in the application.

S.61 provides that the Registrar may direct inspection of documents that have not been published. However the Registrar will only do so in circumstances where the confidentiality of the documents are maintained – and in particular that they are not made available to any person who might obtain a commercial advantage as a result of knowledge of the content [such as a person involved in design creation.]

In practical effect, this means that the Registrar will only release such documents for inspection by legal advisers (such as a barrister, solicitor or patent attorney) following the making of a written undertaking not to disclose the documents to any other person. The Registrar would only contemplate release to other agents a party might engage if satisfied that the person concerned would be subject to serious professional consequences if they breached the undertaking.

The net result of this is that an unrepresented person will have serious difficulties in being able to successfully prosecute a s.29 request.


D13.2.2.1  Procedures for allowing inspection of an unpublished design application.

Precedent

Words equivalent to s.66(1)(b) were judicially interpreted in Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished), where Fullagar J. said:

"In s.55(1)(e) I consider that the words "before the Commissioner or in a legal proceeding" govern not only the preceding word "produced" but also the preceding word "inspected". The power to order inspection, conferred by the section, is so far as relevant confined to ordering and inspection "in a legal proceeding". It may be - and it is unnecessary to decide - that the power extends in a proper case to ordering that the unpublished application and specifications be made available for inspection by the Court, in a proceeding about to be issued, as soon as the proceeding is issued, that is to say, at a future date provided that, by the future date, the legal proceeding is constituted, but I am clearly of the opinion that no order may be made under the section for inspection in relation to legal proceedings contemplated where the inspection may take place before relevant legal proceedings have been properly instituted; and the better view is, I think, that no order for inspection in relation to court proceedings may be made at all until such proceedings have been properly constituted. The inspection can take place only in the course of, and for the purpose of, 'live' legal proceedings."

- but note that this quote refers largely to the powers of a Court.

A request under the equivalent provisions of the Patents Act 1952, and how it was dealt with, is referred to in Magee v Farrell (1986) AIPC 90-296.

Note also Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc, (1998) AIPC 91-434.

If there is a justification for granting access to unpublished documents, the general rule is that they can be made available to a person's legal representative on the making of appropriate undertakings regarding confidentiality. An example of a draft undertaking is given below - although the appropriateness of the text must be assessed on the merits of each individual case.

In the matter of:

Design application no:

in the name of                     and a request under section s.29 by                


I ……………………………………………….. <name> apply to the Registrar for access to inspect certain documents under section 61(1)(b) of the Designs Act 2003.


These documents are:           .


I undertake that I will treat those documents and the information contained therein as confidential and will not disclose the information contained therein to any other person until I am satisfied that they have been granted access by the Registrar to inspect that material.  I also undertake to only use the information contained in the documents for the purposes of the above request under section s.29.

Inspection will usually be limited to a party’s legal representative or an employee of the legal representative or an independent third party expert.  The other party might be granted restricted access to documents in the file other than the representations if it could be shown that access was essential in the interests of justice and there would be no breach of duty of confidentiality. (See Davies v Eli Lilly & Co. (1987) 1 All ER 801). Access will not be granted without the design applicant being given an opportunity to object to that access, and/or comment on the terms of any confidentiality undertaking.

Note: While the other party might be given access to general correspondence, the confidentiality issue will usually prevent them being given access to the representations, or correspondence referring to the content of the representations.

Normally inspection can take place at the Designs Office in Canberra.

Importantly, the restrictions under s.61 relate to actions of the Registrar. If the parties can agree, they can exchange documents between themselves without involving the Registrar.

Where the Registrar has concerns about releasing the documents and the parties cannot agree to access, it may be appropriate to follow the process of Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088.  In such cases, access to an unpublished application may be on the following basis:

  • the person seeking access must provide the Registrar with a representation of what they allege their design to be
  • an examiner, or agreed third party, will compare the representation of the alleged design with the designs in the application, and report whether the alleged design is disclosed in the application
  • upon appropriate undertakings as regard confidentiality being made, the report will be given to the person seeking access, and the design applicant (or their respective legal representatives).

See Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088.


D13.2.3  S.29 Disputes where some or all of the designs have been Registered or published

A determination under s.29 must relate either to identifying the entitled persons, or the manner in which the application can proceed. However the Registrar will decline making a determination where there is no purpose to be served by the determination.

Where the all the designs in an application have either been published under s.57 or registered, there are no further proceedings that can occur with respect to the application. Accordingly the Registrar will not make any determination under s.29 in respect of such designs in the absence of compelling reasons to do so.

Where some of the Designs have been registered or published, but others not, it may be possible for there to be a meaningful determination with respect to those designs that have not been registered or published. In this regard, it should be noted that if the application has lapsed with respect to those other designs, the application might be capable of restoration under s.137. In such cases a request under s.137 would need to be on file – and the Registrar will determine on the facts of the case whether the s.137 request is determined in parallel with, or prior to, the s.29 dispute.