Home New
DesignsConversions
Converting an Old Act Design Application to
an Application under the New Act
Background information:
Upon commencement of the Designs Act 2003 (“the new act”), on 17
June 2004, there will be design applications which were filed under the Designs
Act 1906 (“the old act”)
ie applications filed prior to 17 June. These applications that have not been
finally dealt with under the provisions of the old act are called ‘transitional
applications’.
A ‘transitional application’ is defined in section 161 of the new
act as an application for registration of a design that has not lapsed and has
not been registered or refused, and was made under the old act before the commencing
day of the new act.
Chapter 12, Part 2 of the new act sets out Transitional and Saving
provisions in relation to various matters. Specifically, sections
159 - 161 of the new act make provision for converting an old act application,
as set out above, to an application under the new act.
If conversion is not requested:
Conversion is not mandatory. If an old act ‘transitional
application’ is not converted to an application under the new act, it
will continue to be examined and dealt with as it would have been under the
provisions of the old act.
If conversion is not requested then a transitional application will still be
subject to examination and registration as per the old act procedures. Registrations
relating to transitional applications, even if they are registered after the
commencement of the new act, will have a 16 year term with the old act renewal
periods and renewal fees as well as the old act validity and infringement provisions.
All old act registrations will also be subject to ‘opposition to the
extension of term’ by other parties, within 11 months of registration,
under the provisions of subsection 27A(4) of the old act.
Requesting conversion:
An applicant of a transitional application may, if they wish, request to convert
their application to an application under the new act.
A decision to request conversion is totally at the discretion of the applicant
and should be considered carefully taking into account all facts and circumstances.
Conversion is not mandatory, and should only be requested where all the relevant
factors have been considered. Once a request for conversion has been processed
it cannot be undone, so think carefully before acting.
A request to convert can be made at any time before the transitional application
is registered or before the application is lapsed, withdrawn or refused.
Converting a transitional application may be of benefit for an applicant to
get prompt and straightforward registration, which is only subject to a formalities
check and not substantive examination. Note that registration under the new
act does not include examination and that examination can or may be necessary
at a later stage. If examination is subsequently requested either by the registered
owner or another person, that will involve a further fee (see below).
Fees:
There is no fee for requesting conversion of a transitional application.
Note, however, that if a transitional application includes more than one design
and the applicant requests to register the designs separately, or it is apparent
that there is clearly more than one design to be registered, the Designs Office
will issue an Invitation To Pay (ITP) in respect of the excess designs, over
and above the first design. The applicant will have two months from the date
of the ITP to pay the fee/s or to exclude or withdraw the excess designs. If
the excess designs fee/s are paid the designs can be registered separately.
It is also relevant to note that there is no examination fee under the old
act as examination is part of the application processing to registration. This
is not the case for a converted application since a design which is converted
and then registered under the new act provisions may be subject to examination
after registration which is a separate fee in the new act.
Effect of converting an application:
Under the provisions of section 160 of the Designs Act 2003, a converted design
application is taken to:
• be an application under the Designs Act 2003;
• have the filing date of the transitional application;
• have the same priority date as it had under the transitional application;
• meet the minimum filing requirements of the Designs Act 2003;
• include a request to register each design disclosed in the transitional
application; &
• have a term of ten years starting from the date of the conversion request.
Important Note: As a result of conversion, the term of registration for the
converted application starts from the date of the conversion request. The period
of time between the filing date of the transitional application and the date
of the conversion request will be lost in terms of infringement.
More information:
More information on issues relating to the transitional and saving provisions
of the Designs Act 2003, including converting a transitional application, can
be obtained:
• from the Questions & Answers database on our New Act webpage -which
is accessible from the IP Australia website, www.ipaustralia.gov.au ; or
• by contacting our Customer Support Centre via phone on 1300 651010 or
by email at assist@ipaustralia.gov.au
|
