20.6. Convention priority: Basic application

The first application in a convention country is the basic application (often referred to as the priority document). It must be for the same design but is not necessarily identical to the Australian application.

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Multiple previous applications

The basic application is the first application filed in a convention country for the design. If the applicant fails to reference that first application, the claim to convention priority will be invalid. There may be difficulties in identifying the first (basic) application if the applicant has filed several applications for a design in different jurisdictions before filing in Australia. In such cases, it may be acceptable to claim priority based on more than one convention application.

Example

The applicant files the design in Country A.

They subsequently file a design in Country B, claiming priority from Country A. The representation supplied in the application for Country B is slightly different from what was submitted in Country A.

They then file in Australia (Country C) with the same representations that were filed in Country B.

The dilemma for the applicant is that if they specify the application made in Country B as the basic application and it is subsequently determined that the design was disclosed in the application made in Country A, they will have lost all convention priority.

Conversely if they specify the application made in Country A as the basic application and it is subsequently determined that the design was not disclosed in that application (i.e. it was not the same design they filed in Australia), they will also 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. In this situation the priority date for the Australian application is taken (in the first instance) to be the earlier of the 2 possible basic applications.​​​​​​​

Basic applications that can be disregarded

We can agree to disregard an earlier basic application if all the following conditions apply:

• it was filed in the same convention country as the otherwise earliest application
• at the time of filing the Australian application, that earlier application had been withdrawn, abandoned or refused AND was not open to public inspection
• the earlier application has not been used as the basis for claiming priority in a convention country.

(See reg 3.07(1))

In this case the applicant can ask the Registrar to disregard the earlier application (reg 3.07(2)). They must make this request before the design is registered. Once it is registered we cannot disregard an earlier basic application.

If the Registrar is satisfied that the conditions above apply, the request must be granted (reg 3.07(3)). We then record on the file that the earlier application is to be disregarded.

If the Registrar is not satisfied, we advise the applicant and give them an opportunity to file further material supporting the request.

Other designs in the basic application

Provided the design that is the subject of the Australian application is in the basic application, it does not matter that the earlier application includes other designs.

Representations

The representations in the basic application do not have to be identical to those in the Australian application – what matters is that they show the same design.

A test for assessing whether the designs are the same is to consider whether the design in the basic application, if publicly available before the priority date, would be grounds to assess the design being examined as not new. If so, the basic application is for the design being examined.

Which foreign rights count as design rights

The basic application must be for protection of the design. This means that the rights applied for must relate to the visual appearance of a product, not to other forms of protection such as patents or trade marks.

Design rights are referred to differently in different countries. What matters is the type of protection, not the terminology. For example:

• a ‘design patent’ in the US is fully equivalent to a design in Australia
• a ‘utility model’ in Japan, Germany and several other countries is effectively a design in Australia
• a ‘utility patent’ in the US is NOT the equivalent of a utility model or a design – it is a standard patent.

Claims of priority from a patent application

Occasionally an applicant will claim priority based on a patent application. The validity of such claims is not straightforward.

Generally patents do not specifically provide design protection, so a patent application cannot be a priority document for a design. However, because the distinction between the 2 types of protection is not always clear, we will usually assess claims of priority from a patent on a case by case basis.

Our general approach in such cases is:
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• We do not object if an applicant includes a patent application as a priority document. That priority claim will only become an issue if we need to determine whether a relevant citation is part of the prior art base.
• In conducting examinations, we start from the position that priority cannot derive from a patent application.
• Any arguments that a patent application is a valid priority claim should be referred to the Quality and Practice section within the Trade Marks and Designs Group.