18.1. Prior publication or use exceptions: overview

Key legislation in this topic: Designs Act: ss 17, 18, 67(3), 68(1); Designs Regulations: previous reg 2.01

Key related topics: Convention priority, Prior art base, Priority date

Section 17 outlines certain exceptions to the rule that a design is not registrable if it was used or published before the priority date. The provisions that may apply will often depend on the priority date or when the design was originally filed with IP Australia. 

Designs filed before 10 March 2022

For designs which were filed before 10 March 2022, the previous s 17 can be used for:

• disregarding the publication or use of the design at an international exhibition that occurred with the consent of the registered owner (or their predecessor in title) (s 17(1)(a) and reg 2.01)
• disregarding the publication or use of the design without the consent of the registered owner by another person who derived or obtained the design from the registered owner (or their predecessor in title) (s 17(1)(b))
• disregarding information, including disclosures made to the Commonwealth Government or to an Australian state or territory government (s 17(2)).

Such publications/uses of the registered design under examination (the subject design) are not part of the prior art base and are not a ground to revoke registration.

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Designs filed on or after 10 March 2022/or with a priority date on or after 10 March 2022

For designs which are filed on or after 10 March 2022, the current s 17 can be used for:

• disregarding the publication or use of a design in a period of 12 months leading up to the priority date of a design (the 'grace period'). Only publications/uses which occur on or after 10 March 2022 can be disregarded under the grace period
• disregarding publications and uses occurring before 10 March 2022, under provisions concerning the 'international exhibitions' and 'unauthorised disclosure' provisions
• disregarding information, including disclosures made to the Commonwealth Government or to an Australian state or territory government (s 17(2)).   

Thus, it may be possible for some designs, those filed on or after 10 March 2022/or which have a priority date on or after that date, to be the subject of both the grace period provision and past version of s 17 concerning unauthorised disclosures and international exhibitions. This will ultimately depend on when the use or publication occurred.

Again, publications/uses of the registered design under examination (the subject design) are not part of the prior art base and are not a ground to revoke registration where s 17 applies to that particular use or publication.​​​​​​​

Copyright

​​​​​​​A related exception to the prior publication rule occurs where there is an overlap between design rights and copyright.

There are complex interactions between copyright law and designs law. In Australia, most original artistic, literary and other types of creative works are automatically protected by copyright as soon as they are created. In most cases, a work cannot be protected by both the Copyright Act 1968 and the Designs Act.

Where a design has been examined and the examiner has raised a ground for revocation based on a lack of newness or distinctiveness, the owner may seek to use s 18 to have the relevant citation excluded from the prior art base.

Under s 18, a registered design that might otherwise be invalid can be deemed to be valid – publication or use of an artistic work is not taken into account when determining whether a registered design is new and distinctive in certain circumstances.