17.4. Prior art base: Trade marks and patents as citations

Date Published

The publication or use of a trade mark, or a design within a patent specification, can form part of the prior art base and be considered citeable prior art.

A clear example of this is a shape trade mark which inherently discloses a product of some type having 3-dimensional features of shape and/or configuration, and possibly pattern and/or ornamentation. See below trade mark extract:

Citable trade mark extracts may also include those that whilst not seeking protection for the shape of a product, consist of or include an image of a product (displaying shape and configuration, and possibly pattern and/or ornamentation of a thing) as trade mark material seen in the extract.

A patent specification, to the extent that it discloses a design, can also be citable prior art under s 15(2)(b). The specification may include patent drawings illustrating the claimed invention that are applicable to a product that is the subject of a design application.

​​​​​​​Regardless of whether the product that bears a trade mark or is the subject of a patent is relevant to s 15(2)(a) or s 15(2)(b), in all instances the question to be asked is: what is the design (if any) that is disclosed in the citation?

Amended Reasons

Amended Reason Date Amended
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