18.3. Prior publication or use exceptions: Unauthorised disclosures

We will disregard the publication or use of the subject design before the priority date if the person who published or used it did so without the consent of the owner (previous s 17(1)(b)).

This section may only apply to uses and publications occurring before 10 March 2022. 

Conditions for this exception

For s 17(1)(b) to be considered, a design application in respect of the (subject) design needs to have been filed within the prescribed period. This means an Australian application consisting of, or including, the design already published or used without authorisation. An initial design which contains the design which was the subject of an unauthorised disclosure may qualify for this exception under s 17. 

The prescribed period is 6 months from the date on which the first publication or use of the design took place (reg 2.01(3)). This period of time will apply even if the Owner only becomes aware of the disclosure after the 6 months period and only through an examination report. 

In calculating whether an application has been filed within the period, it is the filing date of the Australian application that is relevant, not the priority date of design(s) included. See Allen Hardware Products v Tclip [2008] ADO 7 at 44.   

​​​​​​​In response to a ground for revocation being raised, the owner:

• must be able to show that the publication actually was unauthorised
• should provide information that addresses the requirement that the unauthorised publication or use was done by another person
• should provide information that satisfies the examiner on the balance of probabilities that derivation of the design from the owner has occurred.

A declaration should engage with the wording and requirements of s 17(1)(b). Information about any confidentiality agreements, that supports the publication or use being unauthorised, may also be helpful. Simple statements without any evidence or information that explains the set of circumstances that led to the unauthorised publication or use will not be persuasive.

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Potential for dispute

Noting the types of situations that are commonly seen when this provision is being relied upon, and the particular actions of more than one person, there can be an increased risk of a dispute between interested parties. It may be more appropriate for relevant parties to be heard on this type of matter. ​​​​​​​