27.5. Publication and file access: Prohibition orders

Section 108 of the Designs Act prohibits the publication of information about certain designs if ‘it appears to the Registrar to be necessary or expedient to do so in the interests of the defence of the Commonwealth’. In these cases, the Registrar must issue a written order prohibiting publication.

The effect of a prohibition order is to make disclosure of the design without the Registrar’s consent an offence. The owner of the design has the right to appeal the prohibition order. In certain circumstances the Registrar may revoke a prohibition order.

When an application for a design contains a design that may be subject to a prohibition order:

• a prohibition order is put on the application pending receipt of advice
• the application is sent to a relevant agency to obtain that advice.

If that agency advises that prohibition is not required, the prohibition order is revoked.

There are 2 basic ways in which a design is identified as needing a prohibition order.

• Identified by the applicant: The application is filed as a convention application. It will include a document permitting it to be filed on the condition that it is subject to a prohibition order. IP Australia administrative staff have procedures to handle such applications. If an Australian attorney is involved, they should have the relevant security clearance and facilities.
   
• Identified by the formalities officer: When the formalities officer starts to assess the design application, they become concerned that it might relate to prohibited subject matter.
  
   

As soon as the potential need for a prohibition order is apparent:

• The case is referred to the quality and practice section of the Trade Marks and Designs Group.
• If the quality and practice section determines that a prohibition order is appropriate, they will assume responsibility for the case, including:
  • arranging for an interim prohibition order to be prepared and signed by the Registrar or delegate
  • arranging for the design application to be referred to an appropriate agency for formal advice as to whether the prohibition order should stand.
• While the application is being seriously investigated for a possible prohibition order, the case will be treated as if it is already subject to a prohibition order.​​​​​​​
• The application will be kept in a Security Construction and Equipment Committee (SCEC) container approved for the storage of sensitive and security classified information.

When a prohibition order is in place, disclosure of the design to anyone without the written consent of the Registrar is an offence with a penalty of 2 years imprisonment (s 109(1)). This offence applies to Designs Office staff as well as to the applicant and related entities.

The owner of the design will need written approval from the Registrar before disclosing the design – typically to Defence officials or contractors. The Registrar will seek advice from appropriate agencies before deciding whether to approve the disclosure.

When a prohibition order is in place, we can continue to process the application right up to the point of registration. In fact, registration must take place within the usual time limit; if it does not, the design lapses. However, the design cannot be published or registered while the prohibition order remains in force (s 108(3)).

As the application cannot be registered, the design cannot be examined.

As the design cannot be published, it does not become part of the prior art base unless/until the prohibition order is revoked. If the prohibition order is revoked, the design is published on that day and the priority date will be either the date of the convention priority claim or the Australian filing date, per normal procedures.

The Registrar may revoke a prohibition order. This typically happens in one of 3 ways:

• There is an interim prohibition order pending formal advice, and the formal advice is that a prohibition order is not required.
• The design was filed under an international agreement, and the agency in the other country advises that the prohibition order has been removed in that country.​​​​​​​
• The applicant asks for a review of the need for a prohibition order.

Before revoking a prohibition order, the Registrar will usually obtain advice from relevant agencies.

When a prohibition order is revoked and the design would otherwise have been registered and/or published, we register/publish it immediately.

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The Registrar’s decision to impose a prohibition order is subject to review by the Administrative Review Tribunal (s 136(1)(f)).

If there is an appeal, the Registrar will take steps to ensure the Administrative Review Tribunal applies appropriate confidentiality procedures.