19.5. Priority date: When priority must be asserted

The date for asserting priority is the date of filing. The approved form, for which a design application is submitted in, specifies that priority detail be included at this stage. A later assertion is possible but can cause significant complications and result in flow on effects, for example if a later assertion results in an earlier priority date, this will impact the time-period for requesting registration.

This expectation that priority is asserted at filing is consistent with the agreement that this option is made under. The Paris Convention for the Protection of Industrial Property, at Article 4, indicates that individual countries determine the latest date on which this assertion can be made. Also, it includes a clear reference to a declaration of priority being made at the time of filing the application. This takes into account the right for third parties to be informed of such claims in a timely manner and limits the risk of decisions being made on the basis of a claim not existing being adversely affected.

Priority claims after filing

After filing, applicants can use the amendment process to:

• add a priority date to the application
• change the priority details on the application.

They will need to request an extension of time if the amendment:

• adds a priority claim
• corrects a priority claim in a way that effectively creates a new one.

If the new priority date would lead to a time limit for an action expiring, they will also need to request an extension for that. An example is an extension of time needed to ensure that a request for registration has been filed within 6 months of the priority date.

Potential complications

Correcting the details of a submitted priority claim or adding a new priority claim may convert an otherwise invalid design into a valid design. This is a very serious matter. It could be very serious for third parties who may have unintentionally infringed, because it could mean certification of a design that previously may not have been certified, giving the registered owner an enforceable right. If the priority date changes from the Australian lodgement date to an earlier convention priority date, an identical or substantially similar design may no longer form part of the prior art base (and thus not be a citation).​​​​​​​

The priority date is a critical aspect of a registration. As a result, adding or changing it after filing may create grounds for a request for revocation under s 93(3)(d) – ‘obtained by … false suggestion or misrepresentation’.