Allen Hardware Products Pty Ltd v Tclip Pty Ltd
[2008] ADO 7
•4 June 2008
DESIGNS ACT 2003
DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re: Registered designs 306284 to 306291 in the name of Allen Hardware Products Pty Ltd, and a request for revocation under s.52 by Tclip Pty Ltd
Delegate: Dave Herald Decision: Application for revocation under s.52 – revocation on grounds relating to entitled person. Entitled person found to be Allen Hardware Products Pty Ltd and Tclip Pty Ltd jointly.
Designs 306284 to 306291 revoked.Background
Designs 306284 to 306291 were filed on 15 March 2005, and were registered on 31 March 2006. The Registered owner is Allen Hardware Products Pty Ltd – which I will refer to hereafter as AHP. The designs all relate to joiners for joining extruded arms to create a structure.
On 26 September 2006 Tclip Pty Ltd [Tclip] commenced the present dispute by filing a request for revocation of these designs under s.52 of the Designs Act. The request was accompanied by a statutory declaration by a Richard Dinning, the managing director of Tclip. In brief, the allegation by Tclip is that they approached AHP for assistance with their product; AHP appropriated their ideas to develop the designs currently in dispute – and consequently AHP was not an entitled person in respect of those designs.
Subsequently directions were made for the filing of evidence – following the approach the subject of review in Somnomed Ltd v Commissioner of Patents [2006] FCA 765, [2006] 69 IPR 237. Following the filing of evidence, including further evidence, the matter was ultimately heard on 4 March 2008. Neither party appeared at the hearing.
The evidence
Tclip filed evidence in support of their requests in accordance with the directions of the Registrar. That evidence was the same as that filed with the requests. In contrast, AHP did not file any evidence in support of its entitlement to the designs – with the consequence that Tclip had no evidence to respond to. On the other hand, AHP subsequently filed evidence controverting the evidence of Tclip. Tclip subsequently obtained leave to adduce further evidence, and AHP similarly obtained leave to file evidence in response to Tclip’s further evidence.
While the evidence of AHP has a strong focus of trying to discredit the evidence of Tclip, in my view there is broad agreement over the key issues in the present dispute. Importantly, the primary issue of the dispute is whether the material disclosed in the initial contact between the parties was subject to confidentiality. There is remarkably little direct evidence on this issue. However Alan Harper (for AHP) provides a summary of what he asserts happened over this period in his declaration dated 20 February 2008 (which formed part of AHP’s further evidence). While Tclip may not agree with everything that is asserted in this summary, I am of the view that any such disagreement does not have a bearing on the conclusions to be reached. Accordingly I will simply quote what Mr Harper states, and proceed on the basis that this presents the situation in the most favorable way for AHP.
At the time of the initial contact, Tclip had not yet been incorporated – and consequently relevant actions involved the predecessors to Tclip. The parties behind Tclip were Richard Dinning, Donald and Stephen Petith, and CDA Products Pty Ltd (a company controlled by the Petiths). From late 2005 a further company is involved – Crimsafe Security Systems Pty Ltd – they being engaged by Tclip for distributing the Tclip system in Australia and overseas.
Several quotes below from the evidence of AHP refers to the company United Aluminium Pty Ltd. United Aluminium was engaged by AHP to conduct work in association with the products; Alan Harper was a director of both AHP and United Aluminium.
Creation of the designs
The basis on which the present designs came into existence is summarised on pages 4, and 7 to 11 of Alan Harper’s declaration of 20 February 2008. The following are relevant quotes from that declaration:
·Donald Petith contacted Alan Harper ‘on or about 10 February 2005 to tell me that he needed to get some extrusions manufactured. He told me that his son Stephen had some sketches of extrusions that were required. Mr Petith did not disclose what type of extrusions he required nor did he discuss joiners or other elements of a “system” or give me any indication other than his desire to get some extrusions manufactured. I told Mr Petith to fax the drawings to me in order for me to initiate the process’ (of manufacture).
·On or about 15 February 2005, ‘Stephen Petith faxed hand-drawn sketches of various intended extrusions to me for the purpose of having United Aluminium prepare extrusion drawings and a quotation for supply of extrusions’.
·On or about 21 February 2005, Alan Harper ‘telephoned Stephen Petith to ask him what the extrusions were to be used for as I required this information as part of the extrusion drawings. He told me that the extrusions were part of a framing system for horticultural greenhouses.’
·Following the above conversation, Alan Harper ‘said to Dylan Retif, a designer employed by AHP, (words to the effect) “They (CDA) are going to need joiner fittings to suit these extrusions – I think we should design some fittings and offer them to CDA (Mr Petith’s company)….” ’
·On or about 22 February 2005, Alan Harper ‘completed the extrusion drawing for CDA. While Dylan Retif was working on designs for a number of joiners I focused my attention on what was required to manufacture the joiners. It wasn’t long before I realized that Stephen Petith’s extrusion design was flawed. I discovered that it would take a very expensive manufacturing technique to produce joiners that would suit Stephen Petith’s extrusion designs due to the shape of the two grooves on the flat surface of the extrusion. I decided not to tell Stephen Petith that his design was flawed at this stage. Instead I told Dylan Retif of my discovery and of the need for us to modify the two grooves in our joiner design.’
·On or about 23 February ‘Dylan Retif and I collaborated to produce an amended design for a series of joiners that incorporated the re-designed grooves that would minimize the cost of production of the joiners. I designed a new extrusion that incorporated the re-designed grooves while Dylan Retif continued work on the joiner designs.'
·On or about 4 March 2005 Alan Harper telephoned Stephen Petith to ‘inform him that AHP had designed a range of joiners to suit the greenhouse extrusions’. Harper asserts that he advised Petith at this time that his design was flawed, that AHP had developed a new extrusion design with different grooves, and that AHP ‘were interested in manufacturing the fittings and having CDA distribute them for us’. [In contrast, Dinning (for Tclip) declares that ‘A verbal price was provided by Alan Harper to Don Petith in early March 2005, but this was a ridiculous quote and was not accepted.’]
·On 15 March AHP filed the applications for the designs currently in dispute.
Peripheral issues that may be gleaned from the evidence are:
·There is no evidence that AHP disclosed the material provided by Petith to anyone outside of AHP.
·There is no evidence to show that AHP was seeking a client for the product other than the client base established by Tclip [or the parties that came together to form Tclip – CDA Products, and Richard Dinning]. That is, while AHP endeavored to market the product through CDA Products, and to Crimsafe [a company subsequently associated with Tclip], there is no evidence to indicate AHP sought to market the product beyond Tclip’s client base.
·A letter from Alan Harper to Crimsafe dated 20 February 2006 presents AHP’s view of the substance of a meeting involving Crimsafe and AHP on 17 February 2006. It states inter alia that ‘Allen Hardware Products Pty Ltd will be the exclusive supplier of joiners and other fittings that it may from time to time develop to suit the T-Clip or other systems of Crimsafe Pty Ltd.’ – which prima facie acknowledges a linkage between the present designs and Tclip products.
·The issue of AHP’s intellectual property rights in the designs surfaced in March 2006. A facsimile from Allen Harper to Crimsafe on 12 April 2006 relates to a meeting that occurred on 13 March 2006, and records:
I also refer to our conversation that took place in your car… wherein I informed you that Allen Hardware Products P/L held the intellectual property rights to the joiners presently being developed. You expressed surprise at hearing this information…. [my emphasis added].
· A return fax of that day from Crimsafe, states:
…in the interest of Crimsafe maintaining full control over the total product range, which is used for the manufacture of T-Clip constructions I have listed a number of points of concern.
·Allen Hardware products to sign over all rights and design to T-Clip
·Remove yourself as Co-Author from all documentation…
[While this refers to the transfer of ‘all rights and design’, it is clear from the demand regarding co-authorship that Crimsafe did not accept that AHP had entitlement to the designs.]
· On 18 April 2006 Alan Harper responded, stating inter alia:
Our preliminary research indicates annual global sales potential (joiners/extrusions) of at least US$175m. It is the intention of Allen Hardware Products to register IP in most of the important regions…. Any agreement between Allen Hardware Products P/L and Crimsafe Security Systems P/L would need to take into account the target market areas in which Crimsafe wishes to participate. In recent discussions with the writer you have outlined Crimsafe’s unwillingness to make any up-front payments in respect of the present intellectual property. This also needs to be accommodated in any agreement reached by our companies.
Discussion
Fundamental to AHP’s claim to entitlement in the designs is their assertion that Stephen Petith’s disclosure to AHP was not in confidence. Alan Harper states that Donald and Stephen Petith:
are both very much intellectual property (“I.P.”) savvy. They both understand the importance of protecting I.P. They both understand the concept of disclosure of sensitive information. I have discussed these matters of I.P. protection with both Don and Stephen Petith in the past. We have spoken about the need for non-disclosure agreements, aspects of patent protection, design registration matters and other matters concerning this subject…. It is highly unlikely that the Petiths’ would ever have disclosed any registerable designs without first having protected such designs, either by way of application for registered design or by non-disclosure agreement.
AHP assert that the disclosure of the drawings by Stephen Petith did not involve any express undertakings of confidentiality – and accordingly AHP was free to do what they wanted with the information disclosed to them in those drawings.
In my view, if the disclosure to AHP was truly an unfettered disclosure, the position taken by AHP is probably correct. However AHP appears to have limited its consideration of the issues of confidentiality, and has failed to have regard to the possibility of confidentiality arising from equitable issues. As was stated in Saltman Engineering v Campbell Engineeering (1948) 65 RPC 203 at 213:
Even if … did not make a contract with the Defendants, it does not alter the fact that the confidential drawings were handed to the Defendants for the purpose of executing the order placed with them were the property of Saltman Engineering Company…. The defendants knew that those drawings had been placed in their possession for a limited purpose, namely, the purpose only of making certain tools in accordance with them….
- which seems particularly apposite to the circumstances of the present case. Indeed, Alan Harper states that the drawings were provided to AHP “for the purpose of having United Aluminium prepare extrusion drawings and a quotation for supply of extrusions”.
In Ackroyds (London) v Islington Plastics [1962] RPC 97 at 103 reference is made (with approval) to a footnote in Terrapin v Builder’s Supply [1960] RPC 128 at 130 which reported the comments of Roxburgh J as:
As I understand it, the essence of this branch of the law, whatever the origin of it may be, is that a person who has obtained information in confidence is not allowed to use it as a springboard for activities detrimental to the person who made the confidential communication., and springboard it remains even when all the features have been published or can be ascertained by actual inspection by any member of the public… the possessor of the confidential information still has a long start over any member of the public… It is, in my view, inherent in the principle upon which the Saltman case rests that the possessor of such information must be placed under a special disability in the field of competition to ensure that he does not get an unfair start.
I note that the Saltman case has been followed in Australian and New Zealand cases – see, for example, Silvercrest Sales v Gainsborough Printing (1983) 5 IPR 123, where it was unnecessary to show contract to establish confidentiality – that the plaintiff could rely on equity. In A-G (UK) v Heinemann Publishers Australia (1986) 10 IPR 153, an enforceable equitable obligation of confidence may arise if confidential information is imparted in circumstances imputing an obligation to keep it confidential. And in Fortuity v Barcza (1995) 32 IPR 517 at 528/9, where there was an equitable obligation of confidence arising because ‘Mrs Barcza had the members cards and the Weight Watchers program in her hands, knowing that they belonged to the plaintiff, that they were confidential and that she had them for a strictly limited purpose.’
In my view, the disclosure by Stephen Petith to AHP was clearly for a strictly limited purpose – being (in Alan Harper’s words) “for the purpose of having United Aluminium prepare extrusion drawings and a quotation for supply of extrusions”. Self-evidently, the detailed disclosure was a necessary prerequisite for AHP being able to undertake the required task. There is no suggestion that Stephen Petith (or any of the entitities precedent to Tclip) had published the drawings prior to the interactions with AHP, or had otherwise acted in a manner inconsistent with maintaining confidentiality. AHP, for their part, requested the drawings so that they could provide the service – not as some more general request for public information. Furthermore, the readiness of AHP to immediately devote significant resources to the design effort at their own expense (while deliberately keeping Tclip in ignorance of what they were doing) is fully consistent with AHP having recognised the intellectual property value of the Tclip system. In the circumstances I think the assertions by AHP that the disclosure was not in confidence is no more than a self-serving justification for their conduct, ignoring the basis on which they became privy to that information.
I conclude that the disclosure to AHP that occurred on or about the 15th and 21st February 2005, pursuant to a request by AHP, occurred under a fetter of implied confidentiality – that the disclosure was to be used solely (in the words of Alan Harper) “for the purpose of having United Aluminium prepare extrusion drawings and a quotation for supply of extrusions”. AHP was not free to use that material for any other purpose.
Designership of the Designs
There is some dispute in the evidence about the exact details of what was contained in the fax sent by Stephen Petith on or around 15 February 2005. AHP assert that it only related to the extrusions – that there was no disclosure of joiners. Tclip asserts that joiners were disclosed, at least in broad form. On 27 February 2008 (a few days before the hearing) I invited Alan Harper (who had expressly referred to this fax in his further evidence) to provide me with a copy of that fax and all attachments. He failed to do so, stating that
The material that you requested is not in the bundle of documents that I have in relation to the present matter. The material you requested was something that may have been among the records of United Aluminium P/L. United Aluminium ceased trading at the end of 2006 due to unreliable supply from vendors. The financial records have gone into storage, but I doubt if the material you request would be available as it was not classified as financial records.
However, I do not believe I need to determine whether or not joiners were disclosed in the fax from Stephen Petith. In Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, [2008] 75 IPR 1, the Full Federal Court reviewed the law on inventorship in patents. In the context of joint inventorship, the Full Court stated:
53 There has been some consideration of the principles of joint inventorship in Australia. In Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241 and Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400 joint inventorship was found where one person had a general idea of what was required in a machine but did not necessarily know how to put those ideas into effect and the other person did so. In Costa the Delegate of the Commissioner of Patents said that in his view, the question was whether the invention would have occurred without the second person’s involvement (at 246). In Row Weeder joint inventorship was said to arise where one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to do so. The Delegate of the Commissioner of Patents concluded in Row Weeder (at 405) that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others had a material effect on the final concept of the invention. Whether or not that contribution involved a key inventive step was said to be secondary. Entitlement to joint inventorship does not apply to a person who, not being the true inventor, bases the claim on knowledge derived from that inventor (Stack at [18]).
In my opinion, the principles relating to inventorship under the Patents Act 1990 apply generally to designership under the Designs Act 2003. Both involve activities of original creativity. Both involve situations where multiple people can be involved in the creative exercise. And both require devolution of title from the creator of the work to the person obtaining the legal monopoly right.
In the present case, it is beyond doubt that the sole motivation for AHP’s work on the joiners (the subject of the designs) was the information confidentially disclosed to them by Stephen Petith. There is no evidence that AHP had any related business interests in joiners generally, let alone of anything similar to those designed. And, as noted earlier, correspondence from AHP clearly associates their joiners with the Tclip ‘system’.
It necessarily follows that the designs developed by AHP depended upon the design efforts associated with the material confidentially disclosed to them – that material clearly had ‘a material effect on the final concept’ of the design. The evidence indicates that the designers of the material disclosed to AHP were Richard Dinning and Stephen Petith. Accordingly I am satisfied that Richard Dinning and Stephen Petith are designers of the present designs.
However it is also quite apparent that AHP made significant developments that went beyond the material disclosed to AHP in confidence. Accordingly I am also satisfied that Alan Harper and Dylan Retif (who are entered in the Register as the designers of the present designs) are designers of the present designs.
That is, I conclude that the designers of the present designs are (alphabetically) Richard Dinning, Alan Harper, Stephen Petith and Dylan Retif.
Entitlement to the Designs
Under s.13 of the Designs Act 2003, a person entitled to be registered as the registered owner of a design must be (inter alia) the person who created the design (or their successor in title), or if the designer created the design in the course of employment, or under a contract, with another person – the other person (unless there is a contrary agreement) – see s. 13(1)(b).
In the present case, it is clear that Richard Dinning and Stephen Petith were not employed by, or working under contract with, AHP. That is, the entitlement of Richard Dinning and Stephen Petith does not flow to AHP as a result of s.13(1)(b).
Similarly, it is clear that the design work undertaken by Alan Harper and Dylan Retif was as a result of employment by AHP, and AHP was not employed by Stephen Petith, CDA Products, or Richard Dinning [noting that Tclip had not been created as a legal entity at this time.] There is the question of whether the initial contact between Stephen Petith and AHP was sufficient to form a contractual arrangement – such that the developments by AHP belonged to Stephen Petith (and subsequently Tclip) by reason of s.13(1)(b). However the evidence clearly shows that the development work done by AHP, while building on the designs communicated to them in confidence, went well beyond the scope of any contractual arrangement that might be reasonably inferred from the available evidence.
It follows that the entitled persons in respect of the present designs are those persons for whom the rights of the four designers have devolved. In the case of Richard Dinning and Stephen Petith, it is Tclip Pty Ltd. In the case of Alan Harper and Dylan Retif, it is Allen Hardware Products Pty Ltd. That is, the entitled persons in relation to the present designs are Tclip Pty Ltd and Allen Hardware Products Pty Ltd.
Estoppel in pais
Before dealing with the consequences of the above finding, I note that in his evidence and submissions Alan Harper asserts the existence of what is generally known as an estoppel in pais. This estoppel is said to have arisen by way of Tclip purportedly entering an agreement with AHP on 20 February 2006. The document evidencing the agreement is exhibited in AH-9 and AH-16. It is a letter from AHP to Crimsafe, in which Alan Harper sets out matters discussed at a meeting that occurred on 17 February 2006. AHP seeks to rely on the existence of certain phrases used in that summary to establish the existence of the estoppel. Alan Harper refers to the document in his submissions as an ‘agreement’. However there is nothing in the evidence that indicates any express or implied agreement by Tclip or associated entities. In my view the document is no more than a summary created by Alan Harper of the outcomes of the meeting – necessarily reflecting those outcomes from his perspective.
For an estoppel in pais to apply, the relevant conduct or representations must come from the person said to be subject to the estoppel, and occur in a context of knowledge about what is being asserted. In the present case, there is nothing in the evidence to suggest any conscious acknowledgement by Tclip that AHP was the entitled person in relation to the designs. The assertion by AHP that the letter represents such an acknowledgement by Tclip fails because AHP was the creator of that letter. Similarly any assertion that Tclip acceded to the letter because of subsequent conduct must similarly fail unless it can be shown that Tclip fully understood, and agreed with, what was being imputed in the letter. This has not been done; indeed, as noted earlier there is correspondence that shows that Tclip was ‘surprised’ about AHP’s claims to IP rights at a meeting that occurred on 13 March 2006 – less than a month after the purported agreement.
Declaration under s.52
The registered owner of the present designs is recorded as Allen Hardware Products Pty Ltd. The Register does not record Tclip Pty Ltd as a registered owner. I am satisfied that at the time the present designs were registered, Tclip Pty Ltd was an entitled person. As a result, the conditions of s.52(2)(b) are satisfied.
Section 52 involves a discretionary power to make a declaration. For example, if there had been an estoppel in pais operating against Tclip, it might be appropriate not to make the declaration referred to in s.52(2) – with an outcome similar to that which occurred in Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241. However I am unaware of any issue which militates against me making the declaration in the present case.
Accordingly, pursuant to s.52(2) of the Designs Act 2003, I declare that at the time these present designs were first registered, Tclip Pty Ltd was an entitled person – jointly with Allen Hardware Products Pty Ltd.
It follows, pursuant to s.52(3), that Designs 306284, 306285, 306286, 306287, 306288, 306289, 306290 and 306291 are hereby revoked. I direct that entries in the Register be made to that effect.
Further proceedings
While this conclusion deals with the immediate cause of action, there are a number of consequential issues that may arise. Given the rarity of proceedings of the present type before the Designs Office, the fact that one party is unrepresented, and the apparent complexities in the issues, I think it is appropriate that I set out a range of issues for the consideration of the parties. However,
i.my comments are merely intended to provide some guidance as to the range of issues that the parties need to consider, and do not constitute a decision in respect of any of those issues; and
ii.the parties should ensure they have obtained appropriate legal advice on the issues as they relate to themselves.
Making a new application
Consequent upon this decision, the entitled persons (that is, Tclip Pty Ltd and Allen Hardware Products Pty Ltd) may wish to apply jointly for a new design, using the provisions of s.54. In such circumstances I anticipate the present decision would form the basis for making the declaration referred to in s.54(2). However the making of that declaration involves the exercise of a discretionary power. The regulations do not set a time period for making an application consequential upon such a declaration. But neither do the Act and Regulations provide for a scheme of intervening rights to protect persons who in good faith use the design in the belief that the design has been revoked and therefore free to be used by anyone. (In this respect, s.72(3) does not provide protection for, for example, the set-up costs for manufacturing a product the subject of a design). Consequently it would generally be against the public interest to make a declaration under s.54 after the elapse of a lengthy time from the making of a declaration under s.52(3). It would also be against the public interest to make a declaration under s.54, and allow an indeterminate time thereafter for any new application to be filed. Consequently I anticipate a significant element in the Registrar’s exercise of discretionary powers under s.54 will be the elapsed time for making a request under s.54, and for filing the new application. I also anticipate that the time period of 3 months prescribed for the purposes of establishing intervening rights in respect of extensions of time granted under s.137, would be relevant to ascertaining what time period might be appropriate in the exercise of the discretion under s.54 – with the starting point being the date of revocation of the designs (that is, the date of this decision).
Parties remaining in dispute
If the parties proceed with a new joint application, they should familiarize themselves with s.14 of the Designs Act 2003, which sets out some issues relevant to joint ownership.
In the event that the parties are unable to cooperate in filing a new application, an application might be filed by one or other party seeking relevant directions under s.29 of the Designs Act. Some guidance on s.29 may be obtained from section dealing with Ownership Disputes in the Designs Office Manual of Practice and Procedure. The parties should note that while an uncooperative applicant might (in effect) be excluded from the design application, the Registrar might also insist that the parties cooperate – even if ongoing lack of cooperation would inevitably lead to the designs lapsing or ceasing.
A declaration under s.54 will identify the entitled persons at the time of the grant of the present designs, enabling a subsequent application to be made by those persons. However there is nothing to prevent one of those persons subsequently assigning their interests in the new application to the other persons mentioned in the declaration.
Other designs filed by the parties
The parties have filed other designs relating to similar subject matter, as follows:
· Tclip – Designs 307453, 307454, 307455, 307456, 307457, 307458, 307459, 307460, 307492, and 307493 – all filed on 5 December 2005.
· AHP – Designs 308080, 308470, 308575, 308576, 308577, 308578, 308579 and 309589 – all filed on 28 February 2006.
In the following, I will refer to these designs as the ‘later’ designs, in distinction to the designs the subject of the present dispute which I will refer to as the ‘earlier’ designs.
Without giving detailed consideration to these later designs, I note as follows:
· These ‘later’ designs seem to be of a similar nature to the ‘earlier’ designs. I particularly note that the files of the later AHP designs contain a declaration by Alan Harper asserting that those designs (other than 308578) are a derivative of one or more of the earlier AHP designs;
· The evidence of Richard Dinning (declaration of 29 September 2006) suggests that the Tclip designs involved input from Alan Harper in the context of the present dispute;
· On 29 September 2006 Tclip requested examination of the later AHP designs, referencing the Tclip designs 307453 to 307458, and 307492 (but not 307459, 307460, and 307493). The examiner objected that the later designs were not distinctive on the basis of various ones of those Tclip designs, they being part of the prior art base by reason of s.15(2)(c).
· The earlier designs (the subject of the present dispute) were not publicly available prior to their registration on 2006 March 31 – which is after the filing date of both the Tclip and AHP later designs above.
That is, there is a reasonable basis to infer that my conclusions with respect to the entitlement for the present designs may flow through to many (if not all) all of the above designs. For this reason a copy of the present decision will be placed on the files of all these later designs. However, I emphasize that at the present time I do not make any definite finding as to the entitlement in the above designs; rather the parties need to consider the issue and obtain appropriate legal advice.
Assuming the parties conclude there is a problem with the entitlement in the above designs:
·the relevant ground of revocation [s.93(3)(b)] is associated with the ‘original registered owner’. This defect cannot be overcome by way of post-registration assignment. Prima facie, action under s.51 or s.120 will be required;
·In circumstances such as the present, where a decision flows on to subsequent designs, the Registrar may be able to deal with the subsequent proceedings by way of consent – providing the Registrar can be reasonably satisfied of the matters she is required to consider;
·Delay in dealing with the issues is likely to be a consideration in the exercise of the discretion to make a declaration under s.54(2). [However delay is unlikely to be a material consideration in the exercise of the discretion to revoke a design under s.52(3)];
·The corresponding ground of revocation [s.93(3)(b)] is available to any person – not just a party aggrieved by not being listed as an entitled person.
I note that examination of the AHP designs was requested by Tclip, and that the AHP designs ceased on 2008 April 30 through failure to complete examination within the prescribed time. I understand the Designs Office has received communication from Alan Harper suggesting that AHP never received the examination reports. This may constitute a basis for an extension of time under s.137. However it is appropriate to note that the granting of such an extension of time prima facie affects the interests of the person who requested the examination – Tclip. Consequently, I anticipate that Tclip will be given the opportunity to comment, and/or be heard, on any such request under s.137 for an extension of time – pursuant to s.148. [Compare, for example, R Thomas & A Garnham v Jiejing Pty Ltd [1994] APO 4; 29 IPR 441; (1994) AIPC 91-070].
Finally, to the extent that the Tclip designs have been cited against the AHP designs, there is a question of whether s.17(1)(b) operates in a way to exclude those designs from consideration against the AHP designs – assuming AHP had rights in the Tclip designs that have not been recognized. S.17(1)(b) only applies with respect to applications filed within 6 months of the date of first publication or use (regulation 2.01(3)) of the Tclip designs – that is, before 19 December 2006. While a new application filed following a declaration under s.54 maintains the priority date of the earlier designs (s.55), it does not retain the filing date. Consequently any application now filed is out of time for the protection available under s.17(1)(b) – implying that the parties would need to rely on a s.54(2) declaration with respect to the earliest design that disclosed the design of the new application, and may not be able to pick and choose between the Tclip and AHP designs.
D Herald
Deputy Registrar of Designs4 June 2008
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