The Designs Act - A Guide to Documents Available

Transcription

1 Chapter 14 - Publication, File Access

2 Table Of Contents D14 Publication, File access... 1 D14.1 Background, general issues... 1 D14.2 Documents not publicly available... 2 D14.3 Interaction with the Freedom of Information Act D14.4 Production of documents under s.61(2)... 6 D Powers of the Courts... 6 D Powers of the Registrar... 6 D Precedent... 7 D Who Access is Granted To... 7 D Where Inspection is to Take Place... 8 D14.4 Annex A Draft Undertaking for Access to view Documents under Section 61(1)(b)... 8 D14.5 Right of Lien iii

3 D14 Publication, File access D14.1 Background, general issues The Designs Act 2003 provides a comprehensive regime for the public availability of documents on the file of a design application or registered design. The basic regime is: Before a design is registered or published, documents on the file are not publicly available. The only information publicly available is that published in the AOJD pursuant to s.25 which is set out in regulation After a design is registered or published, all documents on the file are publicly available with some limited exceptions It must be noted that the default position is that everything on the file is publicly available. This includes all file notes, annotations, post-it notes or other material that an examiner or other staff member places on file irrespective of content. 1

4 Chapter 14 - Publication, File Access D14.2 Documents not publicly available There are specific exceptions to the rule that all documents are publicly available at registration or publication. These exceptions are: Plural designs Registration or publication of just one design in an application results in publication of everything in the file. However, if the application was amended to exclude one or more designs; one or more designs were withdrawn from the application; or one or more designs was neither registered nor published the designs that were excluded, withdrawn or not registered or published are not publicly available. Any other document that relates exclusively to those designs is also not publicly available. Correspondence and file notes generated within the Designs Office fall within this regime. It may be noted that: Where an application for plural designs is filed, and the applicant identifies that fact the designs are allocated separate files. Subsequent correspondence will be specific to a particular design. In that way, the likelihood of file notes and official correspondence containing reference to other designs (with consequential publication) is minimised. Where an application discloses plural designs, but the applicant fails to identify that fact, the consequential initial correspondence will necessarily refer to all designs. That correspondence will become open to public inspection once any of the relevant designs is registered or published. Prior to registration or publication: if the Registrar needs to communicate with the owner with respect to several designs; and that correspondence requires incorporation of some or all of the representations (or otherwise disclose material detail of the designs) the Registrar will endeavour to provide separate communication for each design and will only include the representation from another design if that is unavoidable in the circumstances. Where an application containing plural designs is filed, a separate file is allocated to each design, with common correspondence being placed on each. A request to amend one of those designs under s.28 or s.66 can rely on any material filed with the application. However that material might not be located on the file of the design being amended. Where some of those designs are registered or published, and the others 2

5 D14 Publication, File access are not, the delegate will need to carefully consider which documents in the various files are publicly available. [section 60(4)]. Legal exceptions There are 3 specific exemptions associated with legal issues: 1. A document that would be privileged from production in legal proceedings on the basis of legal professional privilege. S 60(2)(a) This covers legal advice sought by the Registrar for the purpose of legal proceedings in which the Registrar is involved. In particular, when a party appeals against a decision of the Registrar, they cannot use the publication provisions to obtain access to the legal advice the Registrar is obtaining with respect to the appeal. 2. A document that is subject to an order of the court or tribunal that prohibits disclosure. S.60(2)(b) This merely ensures that a court order of confidentiality over a document cannot be bypassed by the publication provisions. 3. A document required to be produced under s.127(1)(c) if the Registrar is satisfied that the document, or information in the document, should not be open for public inspection. This protects confidentiality in material that a person is required to file in response to a Notice to Produce. Importantly, the Registrar must be satisfied that the document or material should not be published, and will give consideration to: Has the person producing the material, or who otherwise owns the documents, asserted confidentiality in the material at the time the documents were produced (or when they became aware the documents had been produced)? Does the material contain information in which confidentiality might be assumed? [e.g. patient medical records; commercial sales data.] Is the material in which confidentiality asserted truly of a confidential nature? 3

6 Chapter 14 - Publication, File Access D14.3 Interaction with the Freedom of Information Act 1982 In practice the FOI Act has no practical application with respect to the file of a design application, or the file of a registered design. Specifically, the FOI Act does not apply with respect to any document that is open to public access by another enactment [s.12, FOI]. S.60 of the Designs Act provides a regime for the public access of all documents on the file of a Design. Note that s.31 and the Third Schedule to the FOI Act formally recognises the prohibition against publication provided by sections 61, 108 and 109 of the Designs Act. For these reasons, a request under the FOI Act for documents of the file of a design cannot be processed under the FOI Act. Where a person files an FOI request for documents on a design file, the FOI unit will (where practical) contact the requestor by phone, explain that the documents can only be provided under s.61 of the Designs Act indicate which documents if any are available; indicate the likely cost under the Designs Act of supplying copies of those documents. Where the requestor is well known to the Office, the FOI unit may annotate the request on the basis of the advice received over the phone. The request will then be passed on for processing in accordance with s.60 of the Designs Act and the associated fees. Otherwise the requestor will be invited to submit a new request, it being in accordance with s.60. Section 12(1)(b) and (c) of the FOI Act provides: Part not to apply to certain documents (1) A person is not entitled to obtain access under this Part to: (a) (b) (ba) (c) ; or a document that is open to public access, as part of a public register or otherwise, in accordance with another enactment, where that access is subject to a fee or other charge; or ; or a document that is available for purchase by the public in accordance with arrangements made by an agency. Section 38 of the FOI Act provides: 4

7 D14 Publication, File access Documents to which secrecy provisions of enactments apply (1) Subject to subsection (1A), a document is an exempt document if: (1A) (a) (b) (2) (3) disclosure of the document, or information contained in the document, is prohibited under a provision of an enactment; and either: (i) that provision is specified in Schedule 3; or (ii) Schedule 3 to the FOI Act specifies paragraph 61(1)(a) and sections 108 and 109 of the Designs Act. It should be noted that while the Exempt status of s.38 of the FOI Act does not apply in relation to documents in so far as they contain personal information about a person (see s.38(2) of the FOI Act.) However as a practical matter this is extremely unlikely to apply with respect to a Designs file. 5

8 Chapter 14 - Publication, File Access D14.4 Production of documents under s.61(2) Sec 61(1)(a) of the Designs Act provides that certain documents must not be published or open to public inspection. Sec 61(1)(b) provides that such documents: "are not liable to be inspected or produced before the Registrar or in a legal proceeding unless the Registrar, court, or any person having power to order inspection or production, directs that the inspection or production be allowed." These provisions are identical to s.56(1) of the Patents Act These provisions are rarely invoked, and the following is based on the Patent Office Manual of Practice and Procedure. The operation of these provisions will typically arise in two circumstances: Proceedings which have arisen before the design has been registered (such as a dispute under s.28) such that the relevant material is not open to public inspection under s.60; and Proceedings (such as s.51, 67(3) or 137) where material has been produced following a Notice to produce under s.127(1)(c), and the Registrar has taken steps to protect the confidentiality of some or all of the produced material under s.127(2). D Powers of the Courts The power of a court under sec 61(1)(b) is exercised by means of service on the Registrar of a subpoena ordering the production of specific documents. Any such subpoena needs to be handled promptly and correctly; it should be passed on by hand to a person in an area with relevant legal responsibilities in IP Australia. Note that it has been known for Commonwealth Officials to be dealt with at a personal level for contempt of court as a result of inappropriate handling of subpoenas. D Powers of the Registrar The powers of the Registrar are concerned with providing for inspection before him or her of documents which, pursuant to sec 61(1)(a) are not published or OPI. Requests for such inspection will most likely arise in relation to: ownership disputes under s.29 (or possibly s.30); sec 137 requests for an extension of time (before registration); and financial disputes (but it is likely that such disputes will be before a court, and the relevant documents the subject of a subpoena) Depending on the person making, and the nature of, the request - the person making the request, and any person having proprietary rights in the documents concerned (whether those rights are current or retrospective), may be entitled to be heard before the Registrar. Thus any requests under sec 61(1)(b) must be forwarded to the Trade Marks Hearing section for consideration. 6

9 D14 Publication, File access D Precedent There have been very few requests under sec 61(1)(b) of the Designs Act. or sec 56(1)(b) of the Patents Act 1990, or the equivalent provision under the Patents Act 1952 [sec 55(1)(e)]. However sec 55(1)(e) was judicially interpreted in Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished), where Fullagar J. said: "In s.55(1)(e) I consider that the words "before the Commissioner or in a legal proceeding" govern not only the preceding word "produced" but also the preceding word "inspected". The power to order inspection, conferred by the section, is so far as relevant confined to ordering and inspection "in a legal proceeding". It may be - and it is unnecessary to decide - that the power extends in a proper case to ordering that the unpublished application and specifications be made available for inspection by the Court, in a proceeding about to be issued, as soon as the proceeding is issued, that is to say, at a future date provided that, by the future date, the legal proceeding is constituted, but I am clearly of the opinion that no order may be made under the section for inspection in relation to legal proceedings contemplated where the inspection may take place before relevant legal proceedings have been properly instituted; and the better view is, I think, that no order for inspection in relation to court proceedings may be made at all until such proceedings have been properly constituted. The inspection can take place only in the course of, and for the purpose of, 'live' legal proceedings." - but note that this quote refers largely to the powers of a Court. A request to the Commissioner of Patents under sec 55(1)(e) of the Patents Act 1952, and how it was dealt with, is referred to in Magee v Farrell (1986) AIPC Note also Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc, (1998) AIPC D Who Access is Granted To Where there is a justification for granting access to unpublished documents, the general rule is that they can be made available to a person's legal representative on the making of appropriate undertakings regarding confidentiality. An example of a draft undertaking is given in D14.4 Annex A. However the appropriateness of this must be assessed on the merits of each individual case. Inspection will usually be limited to a party s legal representative or an employee of the legal representative or an independent third party expert. In certain circumstances, such as ownership disputes, the other party would be granted restricted access if it could be shown that access was essential in the interests of justice and there would be no breach of duty of confidentiality. (See Davies v Eli Lilly & Co. (1987) 1 All ER 801). Access to a not-opi file will only be given to an independent person. This creates a fundamental difficulty for an unrepresented party seeking access. However in the case of an ownership dispute under s.28 an appropriate solution is to allow the design to proceed to grant - such that all documents on the file become publicly 7

10 Chapter 14 - Publication, File Access available and convert the s.28 proceedings to proceedings under s.51. [See Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as trustee for Locmac Trust [2007] ADO 7, as explained in paras 2 and 3.] Of course, if the parties can mutually agree to access, documents can be exchanged outside the Designs Act without involving the Registrar. Where the Registrar has some concerns about releasing the documents and the parties cannot agree to access, it may be appropriate to follow the process of Brisalebe v Searle 30 IPR 91, (1994) AIPC In such cases, if access to unpublished designs is sought and granted it may be on the following basis: the person seeking access must provide the Registrar with a statement of what they allege is their design a designs examiner, or agreed third party, will compare the alleged design with the designs contained in the application and report whether the alleged design is disclosed in the unpublished design application upon appropriate undertakings as regard confidentiality being made, the report will be given to the person seeking access, and the design applicant (or their respective legal representatives). See Brisalebe v Searle 30 IPR 91, (1994) AIPC In situations where there is a real issue of ownership, and the relevant application is not published, there may be serious difficulties for the parties in preparing their evidence. While Registrar may consider it appropriate to allow inspection of the file (including evidence filed by the other party) by the legal representatives, it is unlikely that the Registrar will allow inspection under sec.61(1)(b) by the actual party of any material that discloses the technical content of the application. Nor is the Registrar likely to approve communication of that technical content by the legal representative to the actual party. However, this difficulty can be avoided if the parties can reach agreement between themselves to give each other their relevant evidence, without the direct involvement of the Registrar. D Where Inspection is to Take Place Normally inspection can take place at the Designs Office in Canberra, or at any of the State Offices. However, if s.127(2) is invoked with respect to produced material, particularly if documents sought for inspection are particularly voluminous, the Registrar may require that inspection is to take place at the Designs Office in Canberra. D14.4 Annex A Draft Undertaking for Access to view Documents under Section 61(1)(b) In the matter of: Design application no: in the name of and a <request> under section by 8

11 D14 Publication, File access I.. <name> apply to the Registrar for access to inspect certain documents under section 61(1)(b) of the Designs Act These documents are:. I undertake that I will treat those documents and the information contained therein as confidential and will not disclose the information contained therein to any other person until I am satisfied that they have been granted access by the Commissioner to inspect that material. I also undertake to only use the information contained in the documents for the purposes of the above <request/opposition> under section 9

12 Chapter 14 - Publication, File Access D14.5 Right of Lien S.142 of the act, together with regulation 11.16, provides that a registered patent attorney has, in relation to documents and property of a client in a matter relating to designs, the same right of lien that a solicitor has in relation to the documents and property of a client. The regulations do not recognise any right of lien with respect to a registered trade marks attorney, or an agent. The right of lien only exists in respect of documents actually in the possession of the registered patent attorney. In particular, an attorney has no right of lien over documents in the possession of the Registrar. Where an owner changes attorneys, this right of lien may result in the former attorney refusing to pass documentation about a design to the new attorney (typically demanding payment of unpaid bills). However any asserted right of lien cannot operate to prevent the owner or their new attorney obtaining copies of documents on the files of the Designs Office - see s.61(3) 10