D14.4 Production of documents under s.61(2)

D14.4.1 Powers of the Courts

Sec 61(1)(a) of the Designs Act provides that certain documents must not be published or open to public inspection. Sec 61(1)(b) provides that such documents:

"are not liable to be inspected or produced before the Registrar or in a legal proceeding unless the Registrar, court, or any person having power to order inspection or production, directs that the inspection or production be allowed."

These provisions are identical to s.56(1) of the Patents Act 1990. These provisions are rarely invoked, and the following is based on the Patent Office Manual of Practice and Procedure.

The operation of these provisions will typically arise in two circumstances:

• Proceedings which have arisen before the design has been registered (such as a dispute under s.28) – such that the relevant material is not open to public inspection under s.60; and
• Proceedings (such as s.51, 67(3) or 137) where material has been produced following a Notice to produce under s.127(1)(c), and the Registrar has taken steps to protect the confidentiality of some or all of the produced material under s.127(2).

D14.4.1 Powers of the Courts

The power of a court under sec 61(1)(b) is exercised by means of service on the Registrar of a subpoena ordering the production of specific documents. Any such subpoena needs to be handled promptly and correctly; it should be passed on by hand to a person in an area with relevant legal responsibilities in IP Australia. Note that it has been known for Commonwealth Officials to be dealt with at a personal level for contempt of court as a result of inappropriate handling of subpoenas.

D14.4.2 Powers of the Registrar

The powers of the Registrar are concerned with providing for inspection before him or her of documents which, pursuant to sec 61(1)(a) are not published or OPI.

Requests for such inspection will most likely arise in relation to:

• ownership disputes under s.29 (or possibly s.30);
• sec 137 requests for an extension of time (before registration); and
• financial disputes (but it is likely that such disputes will be before a court, and the relevant documents the subject of a subpoena)

Depending on the person making, and the nature of, the request - the person making the request, and any person having proprietary rights in the documents concerned (whether those rights are current or retrospective), may be entitled to be heard before the Registrar. Thus any requests under sec 61(1)(b) must be forwarded to the Trade Marks Hearing section for consideration.

D14.4.3 Precedent

There have been very few requests under sec 61(1)(b) of the Designs Act. or sec 56(1)(b) of the Patents Act 1990, or the equivalent provision under the Patents Act 1952 [sec 55(1)(e)]. However sec 55(1)(e) was 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 to the Commissioner of Patents under sec 55(1)(e) 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.

D14.4.4 Who Access is Granted To

Where 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 in D14.4  Annex A. However the appropriateness of this must be assessed on the merits of each individual case.

Inspection will usually be limited to a party’s legal representative or an employee of the legal representative or an independent third party expert.  In certain circumstances, such as ownership disputes, the other party would be granted restricted access 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 to a not-OPI file will only be given to an independent person. This creates a fundamental difficulty for an unrepresented party seeking access. However in the case of an ownership dispute under s.28 an appropriate solution is to allow the design to proceed to grant - such that all documents on the file become publicly available – and convert the s.28 proceedings to proceedings under s.51. [See Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as trustee for Locmac Trust [2007] ADO 7, as explained in paras 2 and 3.]

Of course, if the parties can mutually agree to access, documents can be exchanged outside the Designs Act without involving the Registrar.

Where the Registrar has some 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, if access to unpublished designs is sought and granted it may be on the following basis:

• the person seeking access must provide the Registrar with a statement of what they allege is their design
• a designs examiner, or agreed third party, will compare the alleged design with the designs contained in the application and report whether the alleged design is disclosed in the unpublished design 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.

In situations where there is a real issue of ownership, and the relevant application is not published, there may be serious difficulties for the parties in preparing their evidence.  While Registrar may consider it appropriate to allow inspection of the file (including evidence filed by the other party) by the legal representatives, it is unlikely that the Registrar will allow inspection under sec.61(1)(b) by the actual party of any material that discloses the technical content of the application. Nor is the Registrar likely to approve communication of that technical content by the legal representative to the actual party. However, this difficulty can be avoided if the parties can reach agreement between themselves to give each other their relevant evidence, without the direct involvement of the Registrar.

D14.4.5 Where Inspection is to Take Place

Normally inspection can take place at the Designs Office in Canberra, or at any of the State Offices. However, if s.127(2) is invoked with respect to produced material, particularly if documents sought for inspection are particularly voluminous, the Registrar may require that inspection is to take place at the Designs Office in Canberra.

D14.4 Annex A   Draft Undertaking for Access to view Documents under Section 61(1)(b)