13.9. Assessing newness and distinctiveness: Searching

To assess newness and distinctiveness, the examiner searches for similar looking designs to form an understanding of the prior art base (s 19(2)(a)). The examiner conducts searches that consider the product bearing the design and the key visual features of the design. Then they compare the design against the existing designs to assess whether the familiar person / informed user (s 19(4)) would see the design as new and distinctive.

Searching everything in the prior art base is unrealistic, if not impossible. Instead the examiner will formulate and execute a search strategy that:

• covers all the factors in s 19
• covers different ways of referring to the product ­– e.g. name variations
• covers different product names that may be relevant to the design
• focuses on the key visual features of the design
• demonstrates that they have thought about the particular circumstances of the owner and where they are most likely to find relevant prior art.

Search strategy

Understanding the prior art base and its state of development is important, but the search will also be looking for similar prior art. Focusing searches on the key visual features of the design will increase the chances of finding similar prior art (not just prior designs of the product).

Examiners also need to be mindful of the overall appearance and the concept that the same or a similar design might exist with a different product name – e.g. the product name is bicycle storage basket but the design strongly resembles a common milk crate.

Before searching

Before beginning a search, the examiner will:

• Scrutinise the original application to see whether it discloses any valuable information. This includes any additional representations that were not included in the final representations. These can give valuable insights as to potential search terms.
• Check whether the design is related to any other designs currently under examination or is part of a larger batch of examination requests. If there is a related file, it may be better for consistency if the same examiner undertakes both/all the related examinations.
• Check all correspondence on file. For example, a third party may have submitted relevant prior art.
• Consider the product to which the design has been applied. Are there other classes which the design or similar designs might be classified in? If so, these classes should also be searched.
• Identify the priority date. This could be the Australian filing date, a convention priority date or the priority date of a design application from which the design being examined was excluded.

Consideration of who the owner is

The examiner will think about the particular circumstances of the owner and where they are most likely to find relevant prior art (IP databases rather than social media, etc.).

It is also important to identify the owner’s connections with other entities. For example if the owner is a large multinational corporation, the design may be affiliated with one of the owner’s subsidiary companies and not the owner itself.

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Search stages

Early in the examination, examiners will generally not restrict their searching to any date range or visual feature.

This is because a request for examination often occurs after the design has been launched to market, which means that limiting the initial searches to a specific time period may result in important information being overlooked – e.g. publications of the design after the priority date that may offer valuable insights or key searching terms.

As the examination progresses, the examiner will gain a greater appreciation of the state of the prior art. Decisions about the most appropriate searching tools and strategies will therefore become clearer as the search develops.

Examiners will continually evaluate the information revealed during the search so far and adapt the search strategy accordingly. For example, if the owner has a strong social media presence and has used it to market the design, it may be appropriate to devote more time to investigating these platforms.