21.3. Satisfied: ‘Satisfied’ as to prior art base

Most objections based on the prior art base concern designs published in a document within or outside Australia (s 15(2)(b)). This means that, to be ‘satisfied’ as to prior art, the examiner will need to provide evidence of the publication of the document in which the prior art appears. ​​​​​​​

Objections that relate to section 15(2)(c) are more complex since the priority date of the design in the prior art base may not have been verified. If a potential citation forms part of the prior art base on the basis of a priority claim, the examiner will need to verify this.

Section 15(2)(c) and convention priority

Convention priority claims are not usually verified at the formalities stage. They can be verified at any time by asking for a copy of the basic application from the registered owner of a design with convention priority (reg 3.06(3)).

On the basis that:

• a design was disclosed in an Australian design application
• it has an earlier priority date than the subject design (under examination)
• It was published (on ADS) as a registered design after the priority date of the subject design
  
   

The examiner should seek to verify the convention priority date of the potential citation before potentially issuing a formal adverse report.

If the owner does not respond in time, or if the document the owner provides does not disclose the design, the convention claim is forfeited. On this basis the priority date of the proposed citation becomes the Australian filing date and the design may no longer form part of the prior art base and be a valid citation.​​​​​​​

If the owner responds in time with a document that verifies the claim, the examiner can be satisfied that the design does form part of the prior art base and a ground for revocation exists. This clears the way for the objection to be raised in an examination report.