17.2. Prior art base: Publicly used in Australia

The prior art base includes designs ‘publicly used in Australia’ (s 15(2)(a)) – that is, designs that have been applied to products, as opposed to appearing in documentation illustrating the design.

During examination, to rely upon prior public use as a ground for revocation, the examiner must establish:

• what was actually used
• when that use occurred
• whether the use was a public use.

It can be difficult to establish prior public use of a design. A third party may assert in a statement, declaration or affidavit that there has been prior public use, but that is not proof of that use or of the details of the use.

If the issue is raised in examination, it is possible that a hearing under s 67(3) will be needed to deal with it properly. The Registrar will usually only make a decision about prior public use after hearing evidence from both parties, with witnesses being potentially subject to cross-examination.

It might be possible to use documentary material to clearly establish prior use – for example, a newspaper report published after the priority date may report a demonstration that occurred before the priority date. However, the examiner will need to ensure that all elements necessary for this ground for revocation are properly established.

What is a public use

For a use to be a public use, the use must have taken place so that a member of the public would have been freely able to ascertain the design. It is not necessary to establish that that person actually ascertained the design – it is enough to show that that person could have freely ascertained the design.

Where prior use is raised in a request for examination, and the examiner is satisfied that a ground for revocation exists if the assertions are true, the examiner will raise the ground for revocation. The owner is entitled to respond to the ground for revocation. Whether the ground for revocation is maintained or not will rely on that response – and, in particular, whether the owner raises any credible elements of doubt about the assertions of prior use that would result in the examiner reconsidering whether they are satisfied that a ground for revocation exists. The issue can also be dealt with under a s 67(3) hearing.

What is not a public use

A use is not a public use if it occurs before people who have all made confidentiality undertakings. Where the use occurs before fellow employees, there will usually be implied confidentiality arising from the fiduciary obligations of the employees to the company.

​​​​​​​When deciding whether a design is new and distinctive, the examiner may also disregard publication or use (public use) in certain ‘prescribed circumstances’ that occurred before the priority date. See s 17, reg 2.01 and s 18 (applications filed prior to March 10 2022) and current s 17 and s 18.