20.7. Convention priority: Requesting the basic application

The applicant does not have to file a copy of the basic application unless we request it. Usually we will make this request (if we do so at all) when conducting an examination. However, we can do so at any time if we believe that the priority claim may be invalid. For example, if an applicant includes a copy of the basic application with their design application and it looks invalid, we will query it at the formalities assessment stage.

The onus is on the person claiming convention priority to prove their entitlement to that earlier priority date (see reg 3.06(6)). Therefore, if we request a copy of the basic application, the owner must file it to avoid losing the priority claim. This applies even if they contend that the request should not have been made or was based on a misunderstanding.

When we request the basic application, the design applicant/owner has 2 months to provide a copy of it – along with a translation if we request one. If they do not do so (and do not apply for and receive an extension of time), they will lose their priority claim (reg 3.06(3)).

Given the potential costs to the owner to obtain a certified copy of the basic application, we should only make this request if it is fully justified.

Certified copy

The Act and regulations do not require the copy of the basic application to be certified by the design's authority in the relevant country. However, in practice we request a certified copy if possible. This can be a copy in an electronic format, certified (see reg 11.26(2) for who can certify it) of the certified copy.

If the owner provides a non-certified copy of the basic application, the examiner has to consider whether they are satisfied that it definitively establishes what was filed, at which office and on what date. If not, we ask the owner for clarification or further evidence (or a certified copy instead). If the owner does not provide enough evidence to satisfy the examiner, we may conclude that they have not provided a copy of the basic application.

Occasionally the basic application has an effective filing date different from the actual filing date (i.e. ante-dated or post-dated). In these cases, there must be supporting documentation.

Translation

If the basic application is in a language other than English, the applicant must also provide an English translation of it, and a certificate of verification. This applies to any documents filed with the Designs Office (reg 11.18).

The translation must ‘accompany’ the basic application. Normally the applicant will file them at the same time, but they can be filed separately as long as the connection between them is clear.

Examiners should not check the correctness of the translation even if they happen to be familiar with the other language. The exception is where there is a mistranslation relating to the priority date, if that date is critical to determining whether a relevant citation is a reason for revocation.

A certificate of verification is a signed and dated statement, usually by the translator, that the translation is a true and complete translation of the document. ​​​​​​​

Example

___________________________________________________________
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..........................................
Dated:.............................................................
______________________________________________________________

If someone other than the actual translator makes the verification statement, we do not question their competence to do so.

Third-party request for the basic application

When a third party wants to view the basic application for a registered design and we do not have the document on file, we:

• ask the owner to provide a copy of it
• inform the third party that we have requested it (giving the date of the request) and will provide a copy to them if and when we receive it.

For designs that have been published rather than registered under the pre-10 March 2022 system, the priority date is not relevant. Accordingly, if a third party asks to see the basic application for a published design, we will not request it from the owner.

If a person or group seems to be requesting priority documents for inappropriate purposes – e.g. wanting to see the basic applications for many unrelated designs – we may require them to justify the request before we ask the owner to provide the documents.

Basic application required for court proceedings

If a basic application is required in court proceedings and it is not included as part of the case file, it is up to the parties involved to deal with the matter by way of directions in those proceedings.