D16.3 Effect of a prohibition order

Date Published

Where a prohibition order is in place, disclosure of the design to any person without the written consent of the Registrar is an offence – with a penalty of imprisonment for two years. [s 109(1) of the Designs Act 2003 (Cth)]. This offence applies to both the applicant and related entities, and to staff in the Designs Office.

In situations where the owner of the design wishes to interest the defence industries in the manufacture or purchase of the product, the owner will need to seek the written approval of the Registrar before disclosing the design to Defence officials, or to Defence contractors. The Registrar will usually seek advice from appropriate agencies before making a variation.

Where a prohibition order is in place, the application can continue to be dealt with under the Act (e.g. minimum filing requirements, formalities check, s 28 amendments, recordal of assignments) – up to the point of Registration. Indeed, the applicant must comply with the usual time limits associated with requesting registration – failing which, the design lapses in the normal manner. Note that the prohibition against registration under s 108 applies subsequent to any decision under Chapter 4 Part 3 Division 1 about whether a design should be registered on its merits. However, the design cannot be published, and the act of registration cannot occur, while the prohibition order remains in force. [s 108(3)].

Since an application that is subject to a prohibition order cannot be registered, such a design cannot be examined – at least until after the prohibition order is revoked. Accordingly, examiners will not see any such designs in their day-to-day work. Nor will they require security clearances in order to examine such designs.

Since a design that is subject to a prohibition order is not published before the order is revoked, such a design does not become part of the prior art base of s 15(2)(b) until the prohibition order is revoked – with an associated publication date. Once the prohibition order is revoked that design will also form part of the prior art base under s 15(2)(c) – with no loss of entitlement to the priority date.