Chapter 11. Excluded Design Details

Date Published

11.1  Introduction

An application can be amended under Section 28 to exclude one or more of the designs filed in it. Section 23 of the Act allows applicants to make separate applications for design/s that have been excluded from an initial application.

Each time a design application excludes one or more design by way of an amendment under s.28 the designs in that application are taken to have been disclosed to the Office.

An excluded design differs from multiple designs in the one application in that the products do not need to fall within the same Locarno class and the registration of the excluded application is not dependent on the registration of the initial application.

11.2  Priority Date of Excluded Designs

The priority date of a design, where it has been excluded from an initial application, is the same priority date as it had under the initial application. If one or more designs in the initial application claimed an earlier priority date, for example a convention priority claim, this does not automatically mean that priority date should be accorded to the later filing. The applicant should announce its claim to earlier priority on the new application form.

11.3  Status of the Initial Application

If details of the initial application are stated on the application form, firstly check that such a claim can be made. Consult the initial application case file to ensure that, at the time the present application was lodged:

  1. the initial application not lapsed or withdrawn, and
  2. none of the designs in the initial application been registered or published.

If the initial application fails either of the above checks, then the applicant should be advised that they are not able to claim priority from the initial application.

Please note that it is acceptable under Section 23 to file a separate application to exclude designs on the same day as designs in the initial application are registered or published.

11.4  Excluded by Amendment

If the checks at 11.3 are met, check the initial application to determine whether the design has been excluded by amendment. If it does not appear that the design has been excluded from the initial application, a deficiency notice should be sent that the excluded claim needs to be deleted.

11.5  Designs which cannot be excluded

A design that has been refused in, or withdrawn from, an initial application cannot be the subject of a new application as an excluded design.

11.6  Registration / Publication Requests

An application in respect of a design or designs excluded from an initial application must include a request for registration or publication of all of the designs disclosed in the new application.