Registered designs in Australia: Paper disclosures, obviousness and limitations of the grace period

A recent Designs Office decision shows that what a prior publication does not show can be just as important as what it does. The decision explores incomplete design disclosures in the prior art, inference of missing features, and highlights an important limitation of Australia’s 12-month grace period.

Introduction – design validity and the potential prior art mismatch

In Australia an industrial design must be new and distinctive over each single item of the prior art base to be validly registered. The prior art base includes designs published in a document anywhere in the world.¹ A limited grace period is applied that protects against self-disclosure within the 12 months before the priority date of the design.²

Most industrial designs registered in Australia are designs of three-dimensional products. Additionally, only complete products are registrable, unlike some other jurisdictions where partial products are also registrable. This creates a potential mismatch with the documentary prior art, as:

1. documents represent designs in two-dimensions; and
2. a document may incompletely show a product, for example only showing selected views (e.g., front and sides only) or including an object or another part of a complex product that partially obscures the product.

Unlike prior art that arises through use of the product, it is not possible for the person viewing a depiction of a product in a document to view the product from another angle or move aside an object that partially obscures the product. It is not unusual for there to be no relevant use of a product with the design shown in a document, either because the product was never made and publicly used or because the use was outside of Australia, as only public use in Australia is prior art.³

How the Designs Office deals with a prior art mismatch

The question that then arises is whether a design is valid or invalid over a prior publication when there is such a mismatch. This issue arises from time to time and has recently been considered by the Australian Designs Office in its decision UAB Orbio World.⁴ In the decision the Delegate applied existing principles to find the product to be distinctive. Those principles included:

• When a document does not explicitly show all the visual features of a design, a relevant issue is whether the remaining features can be reasonably inferred from what is shown, including in some cases because of symmetry; and
• The whole of the citation must be considered, not merely isolated views shown in the prior publication.

In UAB Orbio World the product of the design registration was a portable Wi-Fi apparatus. The prior publication that the primary examiner considered rendered the registered design non-distinctive showed some views of what appeared to be the same product connected to a dock. The Delegate considered that important features of the design were missing in the prior publication because some sides of the product were not shown. Taken together with the requirement to consider the citation as a whole, the Delegate considered the selected views of the prior publication looked substantially different in overall impression to the design of the portable Wi-Fi apparatus of the design registration. Accordingly, the Delegate found the design distinctive over the prior publication.

The question is not one of obviousness

The primary examiner had asserted that it is reasonable and valid to interpret the prior publication as including a separate dock component. However, in doing so the examiner referred to images published after the priority date that showed the dock as a separate component. The Delegate disregarded these images as not forming part of the prior art base.

The Delegate did not approach the issue by asking whether it would have been obvious to a familiar person that the depicted device comprised separate components. Instead, the analysis focused on what visual features were disclosed by the prior publication and what could reasonably be inferred from the disclosure. The Australian inquiry into the distinctiveness of registered designs is substantial similarity in overall impression rather than obviousness.

Limitations of Australia’s grace period

The prior publication considered by the Delegate was a publication of a European design registration of UAB Orbio World in November 2024, just a few months before the priority date in March 2025 of UAB Orbio World’s Australian design application. It was therefore only prior art because it was a publication by an overseas designs office. Australia’s 12-month grace period for self-disclosure does not apply to publications by designs offices.⁵

Therefore, in this case it was the mismatch between the paper disclosure of the prior art and the full views of the three-dimensional product in the Australian registered design that saved the Australian design from revocation.