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for protection overseas
Applying for protection overseas
You can apply for a design in a foreign country by following one of two strategies.
They are:
(i) make a new application in each foreign country as if you were making
an application for your design for the first time - ie. a normal national
application;
(ii) make a new application in each foreign country within 6 months of your
Australian application and specify that you are claiming the date on which
you lodged your Australian application as the priority date of your application
- ie. a national Convention application.
National Applications
In very broad terms, to apply for a design in a foreign country you will need
to prepare representations of the design and complete some forms, all in the
style required by the foreign country. You would file the application in the
industrial property office of the foreign country, using the services of a patent
agent in that country if desired or requested.
Convention Applications
Australia belongs to the International Convention for the Protection
of Industrial Property, the Paris Convention. There
are some 100 member countries of this treaty, including all major industrial
countries.
The treaty has the following effect. If you file an application for a design
in Australia (called the basic application), and within a period
of 6 months you file an application in a country that is a party to the treaty,
the foreign application is entitled to have the date you filed your Australian
application as its priority date. Such an application is a Convention application,
and it claims "Convention priority" from the basic
application.
A Convention application has several advantages. The main one is that you have
a period of up to 6 months to decide whether or not you want to apply in a foreign
country. During this time you keep the date of filing of your Australian application
as the priority date. As a result, any public disclosure during those 6 months
of what you have disclosed in your Australian application will not affect the
newness of your foreign application.
If you lodge your foreign application more than 6 months after your Australian
application, you can not have the date of filing of your Australian application
as the priority date. In this event any disclosure of your design before you
file your foreign application could affect the newness of that application.
You make a Convention application in a foreign country in the same way as a
national application in that country. But in addition, you will need to supply
a certified copy of your original Australian application, the "basic document".
Also if English is not an official language used by the industrial property
office of the country, you will need to supply a translation of the basic documentation
into an official language used by that office.
You can obtain certified copies of your Australian application by writing to
the Registrar of Designs. The postal address is PO Box 200 Woden ACT 2606. There is a fee for a certified copy. See the fee schedule for current fees.
IP Australia does not provide application forms, receive applications, or receive
fees, for or on behalf of industrial property offices in other countries. It
does not give advice or assistance on prosecuting applications in foreign countries.
You will need to ask the foreign industrial property offices to send you details
of their requirements for registering designs in their country.
If you are considering applying for a design overseas, you should also consider
seeking the professional advice of a registered patent attorney. The yellow
pages of the telephone directory list the names of patent attorneys.
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