D06.1 Background, general issues

Date Published

The validity of a Design is assessed against what was known at a particular point in time – the priority date.  [see s.15]. The default priority date for a design is the date of filing the application for the Design in Australia [s.27(1)(a)]. However the date may be an earlier date if:

  • The application is a ‘convention application’. That is, there has been an earlier application for the same design filed in a Convention Country [s.27(1)(b), Reg 3.06 & 3.07)]; or
  • The design has been excluded from an earlier application under s.23, or an earlier transitional application [reg 12.03(3)] see reg 3.08.

The most common basis for claiming an entitlement to an earlier priority date is that of being a Convention application.

As a general rule, it is only necessary to determine the priority date of a design if there is an anticipating design that was published in the period between the asserted priority date and the filing date. That is, there is no routine need to assess whether all the conditions for being entitled to a priority date earlier than the filing date have been met. Furthermore there is no basis in examination under s.65 to object to the details of the priority claim per se. The only basis for raising issues with the priority claim is in the context of an objection of lack of newness or distinctiveness that depends upon whether the claim to priority is valid. Even then, any issues about the validity of the priority date are raised in the context of argument about the correct priority date – not as an objection to the validity of the priority claim per se.

Sections 35 and 36 govern the time for requesting registration by reference to the priority date of the design. In the first instance, that date will be taken as being the earliest priority date asserted in the application.

Note: If the applicant wishes to assert that the design requested to be registered was disclosed in a later basic application, they will need to justify that assertion.

D06.1.1 Plural Designs

When a design application discloses more than one design, the designs may have different priority dates.

This issue will usually only arise if the application claims convention priority from more than one basic application, and those basic applications were filed on different dates. The consequences are:

  • If the different designs are registered, each design may have a different date in the Register;
  • If the Designs are excluded from the original application under s.23, the new applications will carry through the particular priority date relevant to the design in that new application. Similarly if the Design is for an excluded design filed pursuant to reg 12.03(3).

D06.1.2  Multiple bases for Priority

The legislation provides several bases for having a priority date. The fact that the design is entitled to a priority date on one basis does not negate entitlement to a priority date on a different basis. Thus in principal a Design could assert separate and independent priority on the basis of exclusion from an earlier design application, and a convention application filed in the intervening period.

In situations where the design has been excluded from an earlier application, and that earlier application claimed convention priority – the priority of the excluded design is assessed on the basis of the excluded designs provisions. (That is, it has the priority date that it had in the earlier application). In particular, while the priority date ultimately derives from a Convention application, the application for the excluded design is not in itself a Convention application. In this situation, where there is a need to determine whether the conditions for claiming convention priority have been met, that must be done with respect to the earlier application. (see D06.3).

D06.1.3  When must Priority be asserted?

It is quite clear from the Act when read as a whole that any assertion of priority is expected to be made at the time of filing – by completing the priority details in the approved form for applying for a design.

s.27(1)(b) does not identify the time period for claiming priority. However the time frame for requesting registration or publication under s.35, and for lapsing under s.33, is specified by reference to the priority date. Similarly the certificate of registration and the notice of registration are required to include the priority details. These provisions are only fully effective if the priority date is known at filing (or, at the latest, by registration.)

If a priority claim is not made at the time of filing, it may be possible to amend the application under s.28 prior to registration to include or correct the priority details. However an extension of time (s.137) will be required to add a priority claim, or if the amendment of a priority claim was equivalent in effect to adding a new priority claim. Additionally if the amendment would result in certain actions (such as requesting registration) being out of time with respect to the new priority date, the owner may need to also file an extension of time request under s.137 to ensure the relevant actions occurred within the time limits determined by the amended priority date.

Amendments to add or ‘correct’ a priority claim after registration have a particular set of difficulties. It must be noted that the addition of a new priority claim may have the effect of converting an otherwise invalid design into a valid design – and this is a very serious matter. Additionally, as the priority date is a critical element in the processes leading up to the registration of the design, an amendment may give rise to the question of whether the design is subject to revocation under s.93(3)(d) – obtained by false suggestion or misrepresentation. Any such requests are to be referred to the Deputy Registrar of Designs in the first instance.