17.3. Prior art base: Published in a document within or outside of Australia

The prior art base includes designs ‘published in a document within or outside of Australia’ (s 15(2)(b)).

The traditional concept of a document is a paper document. However, documents also include things like recordings, optical discs, and photographs.

A ‘document’ can be:

• any paper or other material on which there is writing
• any paper or other material on which there are marks, figures, symbols or perforations that have a meaning for persons qualified to interpret them
• any article or material from which sounds, images or writings are capable of being reproduced with or without the aid of any other article or device (Acts Interpretation Act 1901, s 25).

‘Writing’ includes any mode of representing or reproducing words, figures, drawings or symbols in a visible form (Acts Interpretation Act 1901, s 25)

So the prior art base includes information relating to designs which have been published:

• in printed publications, including magazines, newspapers, trade journals and catalogues
• on the internet, including on manufacturing websites, in advertisements and in articles
• on the designs or design patent databases of overseas IP offices
• electronically, such as in emailed newsletters
• on social media platforms.

Definition of ‘published’

Something that is ‘published’ has public availability.

A design is published in a document if either:

• the document is one that a member of the public can inspect ‘as of right’
• a person not bound by express or implied confidentiality has knowledge of the content of the document.

​​​​​​​A document is publicly available as long as it is publicly available somewhere in the world before the priority date. This means that examiners can take the publication date of a design or design patent in the database of another IP office as the date of it being published for the purpose of s 15.

Inspection ‘as of right’

A person does not actually need to have inspected the document before the priority date. It is enough to show that they could have inspected it.

Not bound by express or implied confidentiality

For a design to have been considered ‘published’, it should have been made available to the public without obligations of secrecy or confidentiality.

Examples

The decision in Coco v AN Clark (Engineers) Ltd (1968) 1A IPR 586 found that there are 2 requirements to be satisfied for an equitable obligation of confidence to arise:

• The information must have the necessary ‘quality of confidence’.
• It must have been imparted in ‘circumstances importing an obligation of confidence’.

In Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd [2021] FCA 208, an appeal of the decision made in Key Logic Pty Ltd (2017) ADO 8, it was determined that email correspondence containing representations of a design was inherently confidential because the people who received email correspondence were under an obligation of confidence to maintain confidentiality.

If faced with this type of publication, the placement and contents of a confidentiality disclaimer can be important when considering whether the obligation of confidence threshold has been reached.

Within or outside Australia

Publications anywhere in the world are part of the prior art base. The date of publication is the date of public availability; and the public is anyone anywhere in the world.

​​​​​​​There is no requirement that the document be published in Australia before the priority date or that it be published to an Australian citizen before the priority date.