11.1. Excluded designs: overview

Key legislation in this topic: Designs Act: ss 21, 23, 28​​​​​​​
Key related topics: Priority date, Convention priority, Designs disclosed in applications

Requirements for filing an excluded design application.

Where an application contains multiple designs, the Act allows for one or more of those design/s to be excluded from the initial application and filed under a new application. An ‘excluded design’ is entitled to retain the priority date it claimed in the ‘initial application’.

The requirements concerning an application for an excluded design are as follows.

First, section 23(1) imposes conditions under sub-sections (a)-(d) which must be satisfied in order for the application to be regarded as a valid application for an excluded design. Relevantly, those conditions are:

1. There must be one or more designs disclosed in a design application (the initial application): s 23(1)(a).

2. After the initial application is filed, it is amended under s 28 to exclude one or more of those designs (the excluded designs): s 23(1)(b).

3. The initial application has not lapsed or been withdrawn: s 23(1)(c).

4. None of the designs in the initial application has been registered: s 23(1)(d).

Second, section 23(2) imposes a temporal requirement on when an application for an excluded design may be filed. The application for excluded design/s must be filed within the period prescribed by regulations (s23(2) and reg 3.02).This period begins immediately after the Registrar receives the request to amend the initial application under s 28, and ends immediately before either of the following (whichever occurs earlier): 

1. the initial application lapses or is withdrawn, or

2. a design disclosed in the initial application is registered. 

Third, the design/s must not have been refused registration, or withdrawn under s 32(2): s 23(3). 

Note:

• IMPORTANT: Under s 23(2) and reg 3.02, an excluded design application must be filed after the request to amend the initial application. If an excluded design application is filed concurrently with a request to amend the initial application (i.e. in the same batch of correspondence submitted in Online Services), the Registrar will assume that the amendment request was intended to be filed first (i.e. in the correct order). 

• Regarding the requirement in s 23(1)(b), the actual amendment to the initial application need not have been processed as at the time of filing the application/s for the excluded design/s. It is sufficient, and consistent with s 23(2), if the amendment request had been filed at the time of filing the excluded design application. Put another way, the time within which the application may be filed is governed exclusively by s 23(2). 

• Regarding the requirement in s 23(1)(c), a design excluded from an initial application may be applied for as an excluded design where the initial application has lapsed provided that the initial application is first revived after grant of an extension of time.

• It is not possible to exclude all designs from an initial application into excluded design application/s. This is because the exclusion of all designs from the initial application would mean that the initial application no longer meets minimum filing requirements. 

• A person who applies for an excluded design under s 23 is taken to have requested registration of all the designs in the later application (i.e. the application including the excluded design) as at the time that later application is filed: s 36.

What does ‘exclude’ mean?

It is important to remember that words may have technical meanings and consequences under the Designs Act. 

The term ‘exclude’, however, is not defined under the Act. As such, it is considered to have its ordinary meaning, which is to ‘leave out’ or ‘remove’. With one exception, any request made under s 28 that effectively results in a design no longer forming part of the initial application results in the ‘exclusion’ of that design from the initial application. This could include requests that have been framed as requests to – for example –‘exclude’, ‘delete’, or ‘remove’ a design, or alternatively, a request that limits the application to specific designs (the implication being that other designs are thereby excluded). 

The exception is a request under s 32 to ‘withdraw’ a design. The word ‘withdraw’ (and ‘withdrawn’ etc) has a technical meaning under the Act. If a design is withdrawn under s 32, it cannot be included in an application for an excluded design (s 23(3)). If a request is filed to ‘withdraw’ a design and it is unclear whether it is a request for withdrawal under s 32 (i.e. because s 32 is not mentioned), the applicant should be contacted and asked to confirm in writing whether the request is intended to be a withdrawal under s 32, noting this will mean the design cannot then be filed in an excluded design application. However, it is ultimately the applicant’s responsibility to ensure they understand the consequences of their request, particularly given the technical meanings given to words under the Act and the associated consequences.