D14.2 Documents not publicly available

Date Published

There are specific exceptions to the rule that all documents are publicly available at registration or publication. These exceptions are:

Plural designs

Registration or publication of just one design in an application results in publication of everything in the file.

However, if

  • the application was amended to exclude one or more designs;
  • one or more designs were withdrawn from the application; or
  • one or more designs was neither registered nor published

the designs that were excluded, withdrawn or not registered or published are not publicly available. Any other document that relates exclusively to those designs is also not publicly available.

Correspondence and file notes generated within the Designs Office fall within this regime. It may be noted that:

  • Where an application for plural designs is filed, and the applicant identifies that fact – the designs are allocated separate files. Subsequent correspondence will be specific to a particular design. In that way, the likelihood of file notes and official correspondence containing reference to other designs (with consequential publication) is minimised.
  • Where an application discloses plural designs, but the applicant fails to identify that fact, the consequential initial correspondence will necessarily refer to all designs. That correspondence will become open to public inspection once any of the relevant designs is registered or published.
  • Prior to registration or publication:
    • if the Registrar needs to communicate with the owner with respect to several designs; and
    • that correspondence requires incorporation of some or all of the representations (or otherwise disclose material detail of the designs)

the Registrar will endeavour to provide separate communication for each design – and will only include the representation from another design if that is unavoidable in the circumstances.

Where an application containing plural designs is filed, a separate file is allocated to each design, with common correspondence being placed on each. A request to amend one of those designs under s.28 or s.66 can rely on any material filed with the application. However that material might not be located on the file of the design being amended. Where some of those designs are registered or published, and the others are not, the delegate will need to carefully consider which documents in the various files are publicly available. [section 60(4)].

Legal exceptions

There are 3 specific exemptions associated with legal issues:

1.  A document that would be privileged from production in legal proceedings on the basis of legal professional privilege. S 60(2)(a)

This covers legal advice sought by the Registrar for the purpose of legal proceedings in which the Registrar is involved. In particular, when a party appeals against a decision of the Registrar, they cannot use the publication provisions to obtain access to the legal advice the Registrar is obtaining with respect to the appeal.

2.  A document that is subject to an order of the court or tribunal that prohibits disclosure…. S.60(2)(b)

This merely ensures that a court order of confidentiality over a document cannot be bypassed by the publication provisions.

3.  A document required to be produced under s.127(1)(c) – if the Registrar is satisfied that the document, or information in the document, should not be open for public inspection.

This protects confidentiality in material that a person is required to file in response to a Notice to Produce. Importantly, the Registrar must be satisfied that the document or material should not be published, and will give consideration to:

  • Has the person producing the material, or who otherwise ‘owns’ the documents, asserted confidentiality in the material at the time the documents were produced (or when they became aware the documents had been produced)?
  • Does the material contain information in which confidentiality might be assumed? [e.g. patient medical records; commercial sales data.]
  • Is the material in which confidentiality asserted truly of a confidential nature?