17.5. Prior art base: Establishing the publication date

For a published document to be part of the prior art base, it must be shown that the date of publication preceded the priority date​​​​​​​.

This might not be difficult for documents that were published many years before the priority date. The examiner may not need much evidence of the actual date of publication – the mere fact of their existence and their self-evident age may be enough. But, for a document that was published just a few months before the priority date, clear and specific evidence of the actual date of publication will be needed to establish that it was in fact published before the priority date.

Documents in designs office and other publications

If the document was published by a designs office, the date of publication given on the publication is evidence of the date of publication. The publication is usually associated with INID codes 43–46.

The owner might not agree that the date is correct. In that case, the owner has to prove that the date is incorrect. In publications by reputable organisations there might also be a similar confidence in the accuracy of the date of publication on the document. The owner might claim that date is incorrect, but the owner would have the burden of showing that the date is incorrect.

Where a document gives a date of publication as a month or a year, the date of publication is taken to be the last day of the month or year, unless there is contrary evidence of the actual date of publication.

Documents on the internet

Where a document is located on the internet, the rules of publication date apply – that is, it must be shown that the date of publication preceded the priority date. However, because of nature of the internet, there can be significant evidentiary issues.

For example, a page as viewed today may or may not be the same as it was before the priority date. For some websites, because of the nature of the publication, there is a very high presumption that the relevant page is unchanged, or that if it had been changed there would be a notation of some sort. But there are many more sites where no assumptions can be made. Also, it cannot always be assumed that statements such as ‘page last updated on xxxx’ are reliable.

There are a number of public websites where people can upload images. There may be a difference between the purported dates of the images and the dates they were uploaded, and potentially the publication date. The purported date of the image can depend on a date that the user initially arbitrarily sets on their device, and that date can be easily edited with appropriate software. Examiners should not presume that these dates have any validity. However, we can reasonably presume that the date the image was uploaded to the site has validity and is likely to be the publication date – assuming the site is independent and has no commercial interest in the relevant products.

Archived sites and ‘Wayback Machine’

The Wayback Machine is a digital archive of the World Wide Web. It archives websites on a semi-regular basis. In many instances, it may be possible to search this or other similar sites to establish what appeared on the page at a historical date. While these sites will usually give a valid date, the level of certainty about any particular date can at times be below full confidence.

Because of these uncertainties, the Wayback Machine needs to be used with some caution. It can be presumed that the Wayback Machine has enough validity to assert a publication date in the first instance. But we cannot assume that the date is accurate where there is a plausible assertion that the date is wrong.

Where an owner responds with a credible, reasoned explanation of their belief that the date is wrong (for example, based on the owner’s general knowledge of the industry and technology), the examiner will likely accept that the date from the Wayback Machine is not reliable in the particular instance.

But it is not enough for the owner to respond along the lines of ‘the date is unreliable because it is from the Wayback Machine – prove the date’. The presumption of validity of Wayback Machine information will still stand. The examiner will not have any basis to disregard the date provided by the Wayback Machine and will presume that the date from the Wayback Machine is correct.

Rules of Evidence and the Wayback Machine

Proceedings before the Registrar are not bound by the Rules of Evidence. The Registrar can have regard to any matter that is logically probative (see, for example, Minister for Immigration and Ethnic Affairs v Pochi [1980] 31 ALR 666).

If the matter is appealed to a court, those proceedings will be governed by the Rules of Evidence. See E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 (at 125 ff) and Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 for examples of how the Federal Court has treated the Wayback Machine in the context of the Rules of Evidence.

Evidence from the website owner

Where an examiner wants to establish the date of publication of a webpage, they must not contact the owner of the website. This is because we cannot simply accept a declaration or material that an operator has presented when asked about the publication date. For example, if a third party presents evidence that they have collected from the owner of a website to try challenge a design right, a hearing would be a better way to handle the issues of evidence.

Also, if the website owner is a commercial competitor (which may be likely if it contains anticipatory material), there could be serious questions about the reliability of any dates the site owner provides – especially if there is a commercial advantage in giving an early date.

Where we find a relevant document that was plausibly published on a website before the priority date, we will raise the ground for revocation. If the owner challenges the ground, several scenarios might apply.

Scenario 1

The designer (or an affiliated company) owns the website. In this scenario the owner has the relevant knowledge about when information was placed on their website and can provide a declaration on this. The declaration would likely give a sound evidentiary basis against the ground for revocation.

In this situation the owner cannot assert that we should withdraw the ground for revocation merely because we cannot establish the relevant dates. This is because the owner has the relevant knowledge to rebut the examiner’s position. The owner should provide specific dates – not simply a date range without explaining why they have not provided a specific date.

The examiner will not invoke reg 11.28(a) to direct the owner to provide the relevant evidence. Rather, we will maintain the ground for revocation until the owner provides the necessary evidence.

In the absence of explanation, if the owner fails to provide the relevant evidence, the examiner may infer that the owner has no real basis to challenge the alleged publication date.

Scenario 2

A third party owns the website but the date can be challenged because it shows images of products made by the owner that were only manufactured after a later date. In this scenario the owner should provide a declaration identifying the product and when it was first released. This will provide a sound evidentiary basis against the ground for revocation. (The declaration will also assist third parties that later assess the validity of the design.)

Scenario 3

If a third party owns the website and the owner cannot establish that the date is incorrect (but believes it was published after the priority date), they may assert there is a lack of evidence of the publication date. There is an evidentiary burden on the Registrar and on this basis the ground for revocation may be reconsidered.

If the examiner is relying on an assertion to reconsider and withdraw a ground for revocation, this information should record on the case file. This will allow for the decision to be tested later if appropriate.

​​​​​​​Note that a ground for revocation based on a registration being obtained by fraud, false suggestion or misrepresentation (s 93(3)(d)) is limited to actions of the owner before registration and not during examination.