26.6. Production of documents under s 61(1): Access in ownership disputes

In the case of an ownership dispute under s 29, it is best to allow the design to proceed to grant, at which point all documents on the file become publicly available. The s 29 proceedings can then be converted to s 51 revocation proceedings (see Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as trustee for Locmac Trust [2007] ADO 7, as explained at 2 and 3).

If the parties in the dispute agree on access, they can exchange documents between themselves without involving the Registrar.

If the Registrar is involved, s 61 restricts which unpublished documents we can make available for inspection.

The Registrar may allow the person claiming ownership to inspect some general correspondence in the file relating to the application. But, because that person has a commercial interest in the design, they will not be allowed to see:

• the application itself
• the representations
• correspondence referring to the content of the representations.
  
   

Indirect access

If the parties cannot agree to exchange documents and the Registrar has concerns about releasing them (or cannot do so because of s 61), the following approaches may be appropriate.

Report from an examiner or agreed third party

The person claiming ownership will provide the Registrar with a representation of what they allege their design to be.

An examiner or agreed third party will compare the representation of the alleged design with the designs in the application, and report whether the alleged design matches the one in the application.

The report will be given to the claimant and the design applicant (or their legal representatives) after they give appropriate undertakings about confidentiality.

(See Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088)

Inspection by legal representatives

In cases where a party in a dispute is seriously hampered in preparing their evidence because of lack of access to documents, the Registrar may allow their legal representatives to inspect the file (including evidence filed by the other party).

However, it is unlikely that the Registrar will:

• allow the actual party to see any material that discloses the technical content of the application.
• allow the legal representative to communicate that technical content to the actual party.

To make documents available for inspection, the Registrar must be:

• convinced that this is essential in the interests of justice.
• satisfied that there will be no breach of confidentiality.

(See Davies v Eli Lilly & Co. (1987) 1 All ER 801)

Other relevant decisions are Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished), Magee v Farrell (1986) AIPC 90-296 and Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc (1998) AIPC 91-434.