17.1. Prior art base: overview
Key legislation in this topic: Designs Act: ss 15, 17; Designs Regulations: previous reg 2.01
Key related topics: Assessing newness and distinctiveness, Priority date, Prior publication or use exceptions, Revocation
The prior art base is the information against which a design is assessed for newness and distinctiveness. It consists of:
- designs publicly used in Australia
- designs published in a document within or outside of Australia
- designs where:
- the design is disclosed in a design application, and
- the design has an earlier priority date than the designated design, and
- the first time documents disclosing the design are made available for public inspection under s 60 is on or after the priority date of the design (s 15(2)).
Designs that are part of the prior art base are referred to as citations.
Importantly, the definition of ‘prior art base’ identifies the designs that can be individually compared with the design being examined:
newness and distinctiveness are to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art. Put another way, a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being new or distinctive. (LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 at 21)
The prior art base is determined at the point in time immediately before the priority date of the design under examination and includes prior publications made by the registered owner.
There is no difference between the prior art base used for proceedings before the Registrar and that used for proceedings before a court. But a court will only consider material that the parties put before it, whereas the Registrar will make their own investigation of the prior art base during examination to assess whether the design is new and distinctive.