You may want to register your design in other countries. To use your Australian priority date, you need to apply in other countries within six months of filing your application in Australia.
Strategies for applying overseas
You can apply for a design in a foreign country by following one of two strategies:
- You can make a new application in each foreign country as if you were making an application for your design for the first time. This is called a National Application; or
- You can make a new application in each foreign country within six 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. This is called a Convention Application
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 agent if desired or requested. WIPO maintains a directory of international IP offices.
Australia belongs to the International Convention for the Protection of Industrial Property (the Paris Convention). There are over 150 member countries of this treaty including all major industrial countries.
Under the treaty, if you file an application for a design in Australia (called the Basic Application) and within a period of six months you file an application in a country that is a party to the treaty, then the foreign application is entitled to have the date you filed your Australian application as its priority date. This is a Convention Application and it claims Convention Priority from the Basic Application.
A convention application has several advantages:
- You have up to six months to lodge an application in a foreign country
- The date of filing of your Australian application is the priority date
- Any public disclosure of your Australian application during those six months will not affect the newness of your foreign application
If you lodge your foreign application more than six months after your Australian application, you cannot 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.
How to make a convention application
You make a convention application in a foreign country in the same way as a national application in that country. In addition, you may need to supply a certified copy of your original Australian application, known as the Basic Document.
If English is not an official language used by the industrial property office of the country, you may need to translate the basic document into an official language used by that office.
If you are considering applying for a design overseas, you should also consider seeking the advice of an IP professional.
Last Updated: 06/12/2012