- Part 1 - Formalities
- 1. Classification
- 2. Entitlement
- 3. Applicant Name
- 4. Applicant Address
- 5. Address for Service
- 6. (reserved)
- 7. Product Name
- 8. Section 43
- 9. Statement of Newness and Distinctiveness
- 10. Convention Details
- 11. Excluded Design Details
- 12. Registration / Publication Request
- 13. Designer Name
- 14. Representations
- 15. Further Designs
- 16. Amendments
- 17. Formalities Checking Procedure
- Part 2 - Examination
- D01 Citation Index
- D02 (reserved)
- D03 Examination Process
- D03.1 Overview
- D03.2 Requesting examination - requirements
- D03.3 Who may request examination?
- D03.4 Which Designs may be examined?
- D03.5 Court proceedings
- D03.6 Handling concurrent requests for examination
- D03.7 Handling requests for examination when a Certificate of Examination has previously issued
- D03.8 Further reports
- D03.9 Being 'satisfied'
- D03.10 Period for completion of examination
- D03.11 Withdrawal of request for examination
- D03.12 Interface with Court Proceedings
- D03.13 Intention to Certify
- D03.14 Material provided by a 3rd party
- D03.15 3rd Party Initiated Examinations
- D03.16 Revocation during Examination
- D03.17 Expedited Examination
- D04 Identifying the Design
- D04.1 Introduction
- D04.2 Design in relation to a product
- D04.3 What is a product?
- D04.4 Overall appearance, and visual features
- D04.5 Interpretation of representations
- D04.6 Role of a Statement of Newness and Distinctiveness
- D05 Designs which must not be registered
- D05 Designs which must not be registered - s.43, Reg 4.06
- D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b)
- D05.2 Integrated circuits [s.43(1)(c)]
- D05.3 Medals [reg 4.06(a)]
- D05.4 Protection of Word 'Anzac' Regulations
- D05.5 Paper money, securities [reg 4.05(c)]
- D05.6 Scandalous designs
- D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)]
- D06 Priority Dates
- D06.1 Background, general issues
- D06.2 Priority date - Convention Applications
- D06.3 Priority date - Excluded Designs
- D06.4 Priority date - Applications by an entitled person (s.52, 53 or 54)
- D06.5 Priority date - Converted Applications
- D07 Prior Art Base
- D07.1 General Information/Background
- D07.2 Publicly used in Australia
- D07.3 Published in a document within or outside Australia
- D07.4 Designs disclosed in applications
- D07.5 Exhibitions, Unauthorised disclosures
- D07.6 Copyright overlap - s.19
- Appendix - Examiner's Worksheet
- D08 Searching
- D09 Assessing Newness and Distinctiveness
- D10 Amendments
- D10.1 Overview
- D10.2 Ambit of s 28 amendments
- D10.3 Ambit of s.66 amendments
- D10.4 Allowabililty - inclusion of matter not in substance disclosed
- D10.5 Allowability - increasing scope of the Design Registration
- D10.6 Amendments of Statement of Newness and Distinctiveness
- D11 Extension of Time - s.137
- D11.1 Introduction
- D11.2 s.137(1) - Error or Omission by the Registrar
- D11.3 s.137(2) - Summary of the Principles of Law
- D11.4 Making the Application - s.137(2)
- D11.5 Registrar's Discretion - s.137(2)
- D11.6 Advertisement of Extension - Subsection 137(4)
- D11.7 Period of Extension to be Granted
- D11.8 Common Deficiencies
- D11.9 Protection and Compensation Arrangements
- D12 Assignment etc of Designs, the Registrar
- D12.1 Introduction
- D12.2 Registering Assignments
- D12.3 Registering other interests
- D12.4 Correction of the Register - Regulation 9.05
- D12.5 Rectification of the Register by a court
- D12.6 Trusts, Bankruptcy, Insolvency
- D13 Ownership Disputes
- D13.1 Overview of ownership disputes
- D13.2 S.29 disputes
- D13.3 S.30 Disputes associated with recording assignments
- D13.4 S.52 Revocation relating to Entitled Persons
- D13.5 Application by Entitled persons after revocation
- D14 Publication, File access
- D14.1 Background, general issues
- D14.2 Documents not publicly available
- D14.3 Interaction with the Freedom of Information Act 1982
- D14.4 Production of documents under s.61(2)
- D14.5 Right of Lien
- D15 Surrender of a Design
- D15.1 Overview
- D15.2 Processing an offer to surrender
- D15.3 Discretionary considerations in Accepting the Offer
- D15.4 Surrender by consent - and ownership matters
- D16 Prohibition Orders
- Part 3 - Classification
- Amendments to the Eleventh Edition of the Locarno Classification
- Amendments to the Tenth Edition of the Locarno Classification
- Class Heading Summary
- Class 01 - Foodstuffs
- Class 02 - Articles of clothing and haberdashery
- Class 03 - Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 - Brushware
- Class 05 - Textile piecegoods, artificial and natural sheet material
- Class 06 - Furnishings
- Class 07 - Household goods not elsewhere specified
- Class 08 - Tools and hardware
- Class 09 - Packages and containers for the transport or handling of goods
- Class 10 - Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 - Articles of adornment
- Class 12 - Means of transport or hoisting
- Class 13 - Equipment for production, distribution or transformation of electricity
- Class 14 - Recording, communication or information retrieval equipment
- Class 15 - Machines not elsewhere specified
- Class 16 - Photographic, cameras, cinematographic and optical apparatus
- Class 17 - Musical instruments
- Class 18 - Printing and office machinery
- Class 19 - Stationery and office equipment, artists and teaching materials
- Class 20 - Sales and advertising equipment, signs
- Class 21 - Games, toys, tents and sports goods
- Class 22 - Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 - Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
- Class 24 - Medical and laboratory equipment
- Class 25 - Building units and construction elements
- Class 26 - Lighting apparatus
- Class 27 - Tobacco and smokers supplies
- Class 28 - Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 - Devices and equipment against fire hazards, for accident prevention and for rescues
- Class 30 - Articles for the care and handling of animals
- Class 31 - Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 - Graphic symbols and logos, surface patterns, ornamentation
D06.2 Priority date - Convention Applications
The reference to ‘Convention’ applications is a reference to the International Convention for the Protection of Industrial Property of 1883 as revised and amended. The basic concept of the Paris Convention is that if a person files an application for a design in a country, they can maintain that filing date as their ‘priority’ date in other countries providing they file the application in those other countries within 6 months. [The Paris Convention has similar provisions for trade marks, and for patents – except that for patents the period is 12 months.]
The Paris Convention is a so-called normalising treaty. That is, the legal effects are dictated by how national legislation implements the requirements of the treaty, and not the treaty itself. Accordingly the conditions for ‘convention applications’ are to be found in S.27(1)(b) and regulation 3.06 and 3.07.
In Chiropedic Bedding Pty Ltd v Radburg Pty Ltd  FCAFC 142 the Full Federal Court was considering the scope of the term ‘official or officially recognised international exhibitions’ in s.47 of the 1906 Act, and stated:
40. Although the 1906 Act does not reveal a statutory intention to give effect to the Paris Convention, it is proper to infer from the coincidence of wording and subject matter that the Parliament had the Paris Convention in mind when enacting s 47. Perhaps it is appropriate to say that it underlies the statutory provision which was the expression used by the Full Court of this Court in what we think is quite a similar case to the present: Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; 54 FLR 367. At all events, there is no reason why, in appropriate circumstances, the Paris Convention could not be a contextual matter to which reference may be made. Clearly, it could not control the meaning of the statutory words, nor could it be used "to contradict the meaning of the language of an Act of Parliament, that meaning being taken from its proper statutory context": Barry R Liggins Pty Ltd v Comptroller-General of Customs (1991) 32 FCR 112 at 120 per Beaumont J (Lockhart and Gummow JJ agreeing). However, in this particular case, we do not think that Art 11(1) is of any assistance in determining the proper construction of s 47(1). The proper meaning of s 47(1) is revealed by its statutory context (that is, s 47(2)) and there is no need to go to Art 11(1).
In Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; 54 FLR 367, it was stated:
It seems to us plain that what Art 4 provides for has to be understood in the light of the fact that each country has to provide by legislation for the circumstances dealt with. The Treaty arrangements have to be accommodated to the local scene. Moreover, it is open to the municipal law of a country to enact provisions which give effect to those of the treaty in its own way. If the municipal law does not accord with the Treaty (and this can only be decided by an application of ordinary principles), the provisions of the municipal law prevail. The construction of the Treaty itself will be decided, as between nations, according to rules wider than those by which we construe our own legislation. In the present case, we think it was proper and necessary that we became aware of the Treaty background to s 141(1). We have found it illuminating in a general way, but unhelpful in construing the sub-section
D06.2.2 Basic requirements
The basic conditions for claiming convention priority are:
- Before the Australian application was filed, a basic application for protection in respect of the design of had been in a Convention country (the convention application).[Section 27(1)(b)]
- A basic application is an application that is made in a Convention country in accordance with the regulations. That is, made in a convention country as defined in Regulation 1.05, or made in one of the regional offices referred to in regulation 3.06(6).. [Reg. 3.06(1)]
The wording of regulation 3.06(1) superficially is open to alternative construction whereby ‘made in accordance with the regulations’ could be read to qualify the making of the application rather than what is a Convention country. However in so far as this interpretation would limit a basic application to one filed before a regional office of reg 3.06(6), it is clearly contrary to the intention of the legislation and to Australia’s obligations under the Paris Convention and other agreements. [Acts Interpretation Act, s.15AA, 15AB.]
- The convention application is made within six months from the date of application of the basic application. [Reg 3.06(2).]
- The convention application is made by the same applicant as the basic application, that applicant’s assignee, or the legal representative of that applicant or the legal representative of that applicant’s assignee. [Reg. 3.06(2)]
D06.2.3 Convention Countries
For an application to claim convention priority, the earlier application must have been filed in a ‘convention country’ – s. 27(1)(b). Regulation 1.05 defines a convention country as a foreign country that is a signatory to the Paris Convention or a full member of the World Trade Organisation.
For a list of signatories to the Paris Convention see www.wipo.int
For full members of the World Trade Organisation see www.wto.org
Historically, a Convention Country was a country that had signed the Paris Convention. Additionally Australia had a small number of bilateral agreements to treat applications in certain countries the same as convention applications. More recently the TRIPS component of the WTO agreement obliged all members of the WTO to comply with the Paris Convention – irrespective of whether they had become party to the treaty. The term ‘Convention Country’ is now applied to all of the above situations.
D06.2.3.1 Regional applications
In certain regions of the world it is possible to file a design application for protection in a number of countries using one or other of the following:
- the Hague Agreement Concerning the International Deposit of Industrial Designs, done at The Hague on 6 November 1925;
The International Bureau of the World Intellectual Property Organization (WIPO) administers the protection of Industrial Designs for those countries participating in the Hague Agreement. The list of member states of the Hague Agreement can be sourced on the WIPO website: www.wipo.int
- the Benelux Designs Convention, done at Brussels on 25 October 1966 (the Benelux Convention);
Benelux includes the countries of Belgium, the Netherlands and Luxembourg. Note that Benelux itself is not a country, but a region. The member states of the Benelux Designs Convention are Belgium, Netherlands and Luxembourg.
- the terms of the Treaty Establishing the European Community, done at Rome on 25 March 1957;
The Office for Harmonization in the Internal Market (OHIM) grants and administers the Community Trade Mark and Community Design throughout the European Union. The member states of OHIM can be sourced on the OHIM website: http://oami.europa.eu/ows/rw/pages/index.en.do
An application filed under any of these treaties is, for the purpose of the Australian Act, almost certainly a basic application [regulation 3.06(1) and (6)]. The fact of it being a basic application is dependant upon an extra condition:
- for an application made under the Hague Agreement, that application must specify a country that is otherwise a Convention country (that is, a country listed in the First schedule);
- for applications under the Benelux Convention, or the Treaty Establishing the European Community Design, that application must specify a country that is otherwise a Convention country (that is, a country listed in the First schedule), and which is bound by that Convention or Treaty (and for which the convention/treaty is in force).
The Registrar has constructive knowledge that the vast majority of applications filed under these three regional agreements meet the relevant extra condition. Consequently the Registrar will assume compliance with that condition unless there is clear reason to believe otherwise in the particular case.
It may be noted that in contested proceedings, an owner relying upon a priority date prior to the Australian filing date bears the onus of establishing their entitlement to that earlier date.
[see reg 3.06(6)]
D06.2.3.2 New Convention Countries
The requirement that the earlier application be made in a Convention Country is assessed as at the time of filing the Australian application. Consequently:
- if the foreign country becomes a Convention Country between the time of filing the application in the foreign country and filing in Australia, the application can claim convention priority;
- if the foreign country becomes a convention country after the Australian filing date, the application cannot retrospectively claim convention priority; and
- there is no loss of Convention priority entitlement if the foreign country ceases to be a Convention Country after the application was filed.
D06.2.4 The Basic Application
Registration of a design occurs on the basis of the claimed priority. The examiner will only consider the disclosure of the priority document if there is a relevant citation where the determination of the priority date is critical and / or there is reason to believe that the priority claim may be invalid. The examiner may request that the owner / agent supply a certified copy of the basic application, under reg 3.06(3), for the purposes of confirming the validity of the priority claim. It is important to note that this request is a separate consideration that occurs before potentially raising grounds for revocation. If neither of the above circumstances applies, and the date of the claimed priority falls within the permitted period (Reg 3.06 (2)), it will be taken at face value.
Assuming the priority document was on file at the formality check stage, there will be no detailed consideration of whether the priority application is for the same design. The issue will only be raised if it is noticed that the design of the foreign application is completely different to the design of the application – which may lead to the question of whether the correct convention application has been specified. (See D015.2.6)
Regulation 3.06 provides that ‘basic application’ in respect of a design, means an application for protection of the design, being an application …...
The reference to ‘the design’ is a reference to the design that is under consideration. That is, where there is more than one design in an application, each may have its separate ‘basic application’, and/or some of the designs may have a basic application, and others may not. Similarly it does not matter if there are other designs in the foreign application – so long as the design in question is disclosed in that application.
If more than one design is disclosed in a design application, the designs may have different priority dates [s.27(2)].
The requirement that the foreign application be for protection of ‘the design’ does not require strict identity in the representations of the design. The question is an objective one of whether the designs are the same, not whether the representations of the design are the same. In assessing whether the designs are the same, one approach is to consider whether the design in the foreign application, if publicly available before the priority date, would give rise to the ground of revocation of the design not being new. If so, the foreign application is for ‘the design’ in question.
Comment: The right to priority is linked to the earlier application being for ‘the design’; it does not extend to designs that are substantially similar. The mere fact that the representations are different is not determinative of this issue; the question to be asked is whether or not the representations are of the same design.
Where there are differences between the priority application and the Australian design, it might be argued that the Australian design is not entitled to the convention priority date – and as a result it lacks distinctiveness over a publication of that earlier design that occurred prior to the filing of the Australian application. As a matter of principle there is a conundrum with asserting a lack of distinctiveness if priority is simultaneously denied. It may be noted that the s.27(1)(b) requirement for priority refers to ‘an application for protection in respect of the design, which is different to the criteria for both newness and distinctiveness under s.16. Examiners should proceed on the basis that if the disclosure of the priority document is sufficient to give rise to an objection of lack of distinctiveness, there is sufficient disclosure to meet the priority requirements of s.27(1)(b).
D06.2.4.2 Types of priority applications
The earlier application must be an earlier application for protection of the design. That is, the rights sought in the foreign jurisdiction must relate to the visual appearance of a product, and not other forms of protection – such as patents for inventions, or trade marks. Importantly, it is the nature of the protection sought that matters, rather that the name of the protection in the foreign country.
Any application in a Convention Country for a form of protection referred to as a Design in that country can form the basis of a priority claim for a Design in Australia.
The US grants a form of protection referred to as a Design Patent. A Design Patent is fully equivalent to a design, and applications for a US Design Patent may form the basis of a convention application.
A number of countries (the most common being Japan and Germany) grant a form of protection referred to as a Utility Model. Art 4E of the Paris convention expressly provides for a Utility Model to form the basis of a priority claim for a Design.
A utility model is more like a patent than a design. However, as Bodenhausen states in his authoritive Guide to the Paris Convention, when commenting on Art 4E:
It will rarely happen that an industrial design and a utility model concern the same subject matter because, in principle, the first concerns the ornamental aspects of an industrial article whereas the latter relates to its technical novelty. However, since it is a matter for national legislation to define these subjects, cases of overlapping may occur. In such cases, on condition that the identity of the subject is preserved, the right of priority can be claimed to obtain a different form of protection.
A US ‘utility patent’ is NOT a Utility Model – it is a ‘standard’ patent. The US does not grant Utility Models.
Australia is not a convention country for the purposes of the Act. [See Schedule 1 of the regulations, which sets out all Convention Countries for the purposes of the Act.]. As a result, convention priority cannot be based on an earlier Australian design application.
Occasionally an applicant may seek to claim priority from a patent application. The validity of such a claim to priority is not straight forward. S.27(1)(b) sets out the base requirement as:
… an application for protection in respect of the design had been made in a convention country…
(See also the definition of basic application in reg 3.06(1).)
As a general proposition, patents do not provide ‘protection of the design’. This is reflected in the Paris Convention, where Art.4E was inserted specifically to allow Utility Models to be a priority application for a Design. This is to be contrasted with the absence of any equivalent in respect of patents. Accordingly, a patent application is not capable of being a priority document for a design.
The issue of seeking to claim priority from a patent will usually be argued on the merits of a particular case. However the issue is of general importance. In particular, IF a patent application can be a basic application, any applicant who has filed a patent application before a design application, and subsequently files a convention application claiming priority from the design without mentioning the patent, will have an ineffective priority claim [D06.2.4.2]. Accordingly arguments to the effect that a patent application constitutes a priority application are to be considered with great care, having regard to the potential ramifications for other designs.
The US system provides for a design application to be filed out of a patent application as a continuation-in-part – which is a form of domestic priority. While this is indicative that the design was disclosed in the patent application, prima facie the patent application was not seeking rights equivalent to a design. Accordingly (and despite the disclosure in the patent application), the continuation-in-part application would be the relevant basic application.
Where an applicant includes a patent application as a priority document, no objection to that fact as such can arise. The issue of the validity of that priority claim only arises when determining whether or not a relevant citation is part of the prior art base. In the first instance, examiners should proceed on the basis that priority cannot derive from a patent application. Any arguments to the effect that the patent application is a valid priority claim are to be referred to a Deputy Registrar in the first instance.
D06.2.4.3 First application
The ‘basic application’ is defined as being the first application filed in a convention country in respect of the Design [reg 3.06(5)]. It may be the case that an applicant will have filed several applications for the design prior to filing the Australian application. But only the first application satisfies the requirement of being the basic application. If the applicant fails to reference the first such application, the claim to Convention priority will be invalid.
However, it must be recognised that at times the applicant may have difficulty in identifying the first basic application. For example, take a situation where the owner files a design in country A. Subsequently he files a design in country B claiming priority from the application in A – but having somewhat different representations. Finally he files in Australia, with representations the same as in B. The question is – which of applications A and B is the first application filed in a convention country in respect of the Design?
The dilemma for the applicant is that if they specify application B (and not A) as the basic application, and it is subsequently determined that the design was disclosed in A, they will have lost all convention priority. Conversely if they specify application A (and not B), and it is subsequently determined that the design was not disclosed in A they will similarly have lost all convention priority. Accordingly it is appropriate to allow the application to claim priority on the basis of both the earlier applications – with the question of which application first disclosed the design being resolved if and when necessary in the context of a relevant citation.
D06.2.4.4 Devolution of title
A person claiming convention priority must have the right to rely upon that application. Pursuant to regulation 3.06(2), persons who have the right to rely upon a basic application are:
- the applicant in the basic application; or
- the applicant’s assignee; or
- the legal personal representative of the applicant or of the applicant’s assignee;
It is the responsibility of the applicant to ensure they have the relevant entitlement. In particular it is not an issue that the Registrar is able to assess in the formalities check or examination.
It may be observed that where there is a problem with the applicant’s/owner’s entitlement to rely on the priority document, there will likely be a dispute about their entitlement to the design in toto.
D06.2.5 Priority documents
The correctness or otherwise of a priority claim is not per se a ground of revocation. The validity of the claim only arises if there is a relevant citation where the determination of the priority date is critical. Accordingly the Designs Act does not require the routine filing of copies of priority documents. Rather the applicant/owner must (only) provide a copy if and when requested by the Registrar. See reg 3.06(3).
If the applicant/owner does not provide the copy of the priority document [including any translations] within 2 months of being requested by the Registrar, the priority claim from that application is effectively lost [reg 3.06(3)]. Note that the time period may be extended pursuant to s.137.
If the priority documents are not provided in that period the convention priority claim will be deleted.
D06.2.5.1 Requirements of the priority document
While the regulations do not require the copy of the basic document be certified by the relevant office, the document must be sufficient to establish the facts to support the priority claim. That is – what was actually filed, at what office, and on what date. Consequently a certified copy from the relevant office is the desirable form of copy of the basic application.
Issues that can arise if a certified copy is not supplied are:
- What is the basis for asserting the document is a copy of that which was actually filed, and (for example) is not a copy of a draft, nor a copy of documents filed in a related application?
- What is the basis for asserting that the document was actually filed with the specified Office?
- What is the basis for asserting that the filing date is the date specified? In particular, that it is the date accorded by that office and not (for example) the date the application was mailed to the office. And what is the basis for excluding the possibility that the application was post-dated or ante-dated by the Office?
These questions may be resolvable with appropriate evidence. And it may be necessary to deal with these questions by way of evidence if, by the time the copy of the basic application is requested, the owner is not able to obtain a copy of the basic application from the relevant office because it has been destroyed. However unless a copy of the basic application is not obtainable from the foreign office, a certified copy from the foreign office would be the best way of supplying a copy of the basic application.
Note that it can happen that a basic application can have an effective filing date different from the actual filing date (ante-dating and post-dating). However, when this is the case, there must be supporting documentation.
See La Soudure Electrique Autogene S.A.'s Application, (1939) 56 RPC 218 and Poly-Resin Products Ltd.'s Application, (1961) RPC 228.
Where an owner provides a basic application that is not a certified copy from the foreign office, the examiner should consider whether they are satisfied that it definitively establishes what was filed at which office on what date. If they are not satisfied, the owner should be requested to provide clarification or further evidence (or a certified copy) – failing which the Registrar may conclude that a copy of the basic application has not been supplied.
Where the owner has obtained a certified copy of the basic application from the foreign office, it is not essential that they provide that copy. They may file a photocopy of that certified copy of the basic documents, provided the copy has been certified (by any person referred to in reg 11.26(2)) as a true copy of the original.
D06.2.5.2 Translation of the priority document
Regulation 11.18 provides that any document filed in a language other than English must be accompanied by a translation into English with a certificate of verification. Accordingly a basic document that is not in English must be accompanied by a translation into English.
A certificate of verification means “a statement, dated and signed by a person, to the effect that the translation is, to the best of the knowledge of the person, a true and complete translation of the accompanying document”. [reg 11.18(4)] An illustrative form of verification is:
VERIFICATION OF TRANSLATION
I (name and address of translator or other signatory)
state that attached document is a true and complete translation of ............
.............................................to the best of my knowledge and belief.
Signature of translator or other signatory..........................................
Comment: Where a verification of a translation is given by a person other than the actual translator, it is assumed that the person concerned has a basis for attesting to the accuracy of the translation in the terms indicated above. The Registrar would not normally query that person’s competence.
The translation must ‘accompany’ the basic document. In normal circumstances it would be expected that the priority document and the translation would be filed at the same time. But they do not have to be physically attached – it is sufficient that the correct association of the two documents is readily apparent. This is particularly important if the translation is not filed with the basic document.
Examiners should not check the correctness of any translation, even when they happen to be familiar with the foreign language involved. However if there is a relevant citation where the determination of the priority date is critical, the translation is relevant to that determination, and the examiner has good reason to believe the translation is in error, the matter should be raised in association with the justification for the existence of a ground of revocation.
D06.2.6 Requesting the priority document during examination
During examination, a copy of the priority document is only required if there is a relevant citation where the determination of the priority date is critical (for instance a potential citation that falls in-between the Australian lodgement date and the priority date) and / or there is reason to believe that the priority claim may be invalid (for instance a reference to the basic application is found but it does not reflect the particulars of the Australian design registration). The examiner may then request that the owner / agent supply a certified copy of the basic application, under reg 3.06(3), for the purposes of confirming the validity of the priority claim. A verified translation may also be requested under reg 11.18.
Where there determination of the priority date is needed due a potential citation, grounds for revocation should not be raised until the convention priority claim is found to be invalid. This is because the Registrar needs to be ‘satisfied’ that grounds for revocation have been made out. By giving the owner the opportunity to supply the documentation before an adverse report is issued, the registrar can be satisfied (if the documentation is not supplied) that the owner is not entitled to the convention priority date before raising grounds for revocation.
A letter requesting a copy of the basic application should be issued to the owner / agent providing the period of two months within which the relevant documentation must be supplied. If the relevant documentation is not supplied within the timeframe, the owner then forfeits the convention priority and the register will be amended to reflect the new priority date (Australian lodgement date). An adverse report may then be issued raising grounds for revocation if there is relevant art that is identical or substantially similar in overall impression, with a publication or priority date that is earlier than the new priority date of the design under examination.
If the Registrar requests a copy of the priority document, the owner must file a copy to avoid loss of the priority claim. Submissions to the effect that the priority application is not required, or that the request should not have been made, or that the objection based on the potential loss of priority is wrongly taken, do not negate the request for a copy of the basic application or avoid the consequence of failing to provide a copy. Note that the cost to the owner for obtaining a certified copy of the basic application may be non-trivial – and examiners should not be frivolous in requesting a copy of the basic application.
If the owner needs an extension of time to obtain a copy of the basic application from the relevant country, this should be considered in consultation with the Designs Examination Group management team.
D06.2.7 Third-party requests for priority documents
Where the owner has not filed a copy of the priority document, it is not on the file for inspection by third parties. However there is a clear public interest in third parties being able to view the priority document for a registered design (to be able to assess the validity of the Design.)
Where a third party wants to view a priority document of a registered design, and that priority document is not on file, the Registrar will:
- request the owner provide a copy of the priority document; and
- advise the requestor that the priority document is not on file, that the owner has been requested to provide a copy (on the particular date), and that a copy will be supplied to the third party if and when the owner files it with the Registrar.
Any correspondence on the file of a registered design is publicly available (and thus available to the owner.) Third party competitors will typically not want to make themselves known to the owner as a consequence of making a request for the priority document. As a consequence, it may be expected that requests for priority documents will not identify the ‘real’ third party, but come via an agent.
Where a design has been published rather than registered, the priority date has no significance. Accordingly the Registrar will not request the applicant provide a copy of the priority document. It should be noted that if the Registrar did request the applicant provide the priority document, there are no adverse consequences or penalties if they fail to file it.
If it appears to the Registrar that a person (or group of persons) is requesting priority documents for inappropriate purposes, the Registrar may require the requestor to justify why the owner should provide the priority documents before requiring the owner to provide a copy. For example, if the request is for the priority documents of many unrelated designs.
D06.2.8 Requests for priority documents – court proceedings
Where a priority document is required in court proceedings, and the priority document is not on file, the matter will be dealt with by the parties by way of directions in those proceedings. It should be remembered that the default priority date is the date of filing the application in Australia – and if the owner wishes to assert an earlier date, the burden of establishing entitlement to rely on that date lies with the owner.
D06.2.9 The Formalities check on a Convention Application
For an application to be in accordance with the approved form, a convention application must include the following details:
- The date the basic application was made in the convention country,
- The number of the basic application, and
- The country (or country code) where the basic application was made.
Where only some of these details are (legibly) provided, the application is not in accordance with the approved form, and a Failed Formalities Notice is sent. Note that if the fields are completed but the information is erroneous (eg wrong document number, or filing date), there is no failure to comply with the approved form.
No check is made into the validity of the convention claim either at the time of filing the application, or at the time of filing the basic application. That issue is considered if, and only if, there is an actual need to determine the priority date.
There is no requirement for a copy of the basic application to be lodged prior to registration. If the basic application is filed, it is merely placed on file.
The majority of applications claiming convention priority are filed close to the end of the 6th month priority period. Since registration/publication must be requested within six months of the priority date (Designs Act subsection 35(2), Designs Regulation 4.01), a convention application will typically need to include that request at the time of filing to avoid the application lapsing shortly after (or even at) filing for not making that request in time. [See Reg 3.14]
It should be noted that where an application has lapsed as a result of missing this time period, the lapsed status cannot be undone by merely requesting amendment of the Request to delete the convention priority claim. The only mechanism to restore a lapsed application is an extension of time under s.137. That is, where the application has lapsed for failure to request registration or publication within 6 months of the priority date, the applicant must seek an extension of time either to request registration or publication, or to amend the Request to delete the priority claim.
D06.2.10 Disregarding certain basic applications
It is often the case that an applicant will have filed several applications for the design prior to filing the Australian application. In this situation, the ‘basic application’ is the first such application filed in a convention country [reg 3.06(5)].
For the purpose of determining the first application, the Paris Convention makes provision for disregarding certain applications – which is enabled in reg. 3.07. The conditions for disregarding an earlier application are:
- the earlier application must have been filed in the same Convention country as the otherwise ‘earliest’ application;
- at the time of filing the Australian application, that earlier application must have been either withdrawn, abandoned or refused, AND not open to public inspection; and
- the earlier application must not have been used as the basis for claiming a right of priority in a Convention country.
[see reg 3.07(1)]
An applicant may request the Registrar to disregard the earlier application. [Reg 3.07(2)] While regulation 3.07(3) suggests that the registrar MUST disregard the earlier application, this merely is an indication that the Registrar does not exercise any discretionary powers once the necessary conditions have been established. That is, the Registrar must first be satisfied that the conditions [of reg 3.07(1)] have been met. Where the Registrar is not satisfied that the conditions have been met, she will advise the applicant, and allow them an opportunity to file further material in support of the request.
Where the Registrar is satisfied that the conditions precedent for making the request have been met, she will record on the file the fact that the earlier application is to be disregarded.
The regulation is specific in providing the applicant with the possibility to have an earlier application disregarded. Consequently, such a request cannot be made after the design has been registered.
Comment: This is the prima facie position. It should be noted that a disregardal made after Registration may have the effect of converting a wholly invalid Design into a valid Design – with there being no compensation arrangements for 3rd parties who have taken the Design to be invalid.