20.1. Convention priority: overview

Key legislation in this topic: Designs Act: ss 27(1)(b), 35(2); Designs Regulations: regs 3.06, 3.07, 4.01

Key related topics: Priority date, Excluded designs, Further designs, Examination and certification

‘Convention priority’ refers to the Paris Convention for the Protection of Industrial Property. Australia is a party to this agreement.

In examining the validity of a design registration we compare the registered design against other designs that existed before its priority date (s 15). The default priority date is the filing date of the application for design registration in Australia (s 27(1)(a)).

However, the priority date can be earlier for a ‘convention application’. This is where there has already been an application for the same design in a ‘convention country’ (s 27(1)(b), regs 3.06, 3.07) and the application claims ‘convention priority’.

If someone applies for protection of a design in a convention country, in the 6 months after that application they can claim the same priority date for the same design in any other convention country. The initial application in a convention country is the ‘basic application’ (also called the ‘priority document’).

Claiming convention priority is optional.

Criteria for convention priority

The conditions for convention applications are in s 27(1)(b) and regs 3.06 and 3.07.

The criteria for claiming convention priority are:

• Before the applicant filed their Australian design application, they filed an application (the basic application) to protect the same design in a convention country.
• The filing date of the Australian application is within 6 months after the date of the basic application.
• The applicant for the Australian design is the same person who made the basic application or is an entitled person (reg 3.06(2)).