Statutory guidance

DPN 1/09: New procedure relating to convention country priority claims in design applications

Published 28 July 2009

1. The Registrar is aware that the valid registration of a design can be held up by the applicant’s efforts to obtain a copy of the convention application pursuant to rule 7(3) of the Registered Designs Rules 2006. Following a review of designs procedures, it is now felt that our insistence on requiring separate representations relating to earlier convention country priority claims is unnecessary.

2. Rule 7(3) of The Registered Designs Rules provides any party claiming priority in a convention country with a period of three months in which to file an accurate representation of the design subject to the earlier convention application. Under existing practice, applicants present such representations, in effect, as a means of demonstrating the validity of the claim to priority i.e. by showing that the respective applications are the same.

3. Whilst it is imperative that the Registrar continues to accept claims to convention priority which are valid, and reject those which are not, there is no practical need for an applicant to present a separate representation relating to the convention application in every case. Where the applicant has already provided an acceptable representation of the design intended for registration as part of its UK application, and those representations show a design which is identical to that already filed as an earlier conventional application, the Registrar will now consider the requirements of rule 7(3) to have been met i.e. the representations referred to in rule 7(3) will already have been filed as part of the UK application.

4. Under Rule 7(4), claims to priority pursuant to Section 14 of the Registered Designs Act 1949 shall be verified ‘to the satisfaction of the registrar’. To meet this requirement, the Registrar has introduced a simple pro-forma which, when completed and signed by the applicant, will confirm that the design filed as an earlier convention application is identical to the corresponding design in the UK application. The pro-forma DC1, which is available on our website, should preferably be submitted with the form DF2A as part of the UK application. However, where an application claiming priority has been submitted without the pro-forma, the examiner dealing with the case will invite the applicant to complete and submit a copy, thereby providing an alternative and much quicker means of certifying the claim.

5. In the case of applications claiming priority which have been accompanied by a completed form DC1, the Registrar will no longer require the provision of any additional information or representations in order to certify the claim.

6. For multiple applications filed on a single DF2A, applicants need only complete a single DC1 - the form will accommodate references to more than one design.

7. Applicants and agents should be aware that the Registrar strongly encourages use of this form. However, he will not insist that it be used in all cases. In order for the pro-forma system to function as intended, applicants and agents should use it where they are satisfied that the earlier design is identical to the UK design. This means, for example, that any claims, disclaimers and descriptions should be identical (translations permitting), as should references to colour.

8. Importantly, the Registrar does not consider identity of representation to be a prerequisite for demonstrating identity of overall design. This reflects current practice within the UK Designs Registry, where the Registrar is prepared to accept convention claims showing representations different to those submitted on the UK application, if it is patently clear that the respective designs are nevertheless identical. Therefore, an applicant or agent may wish to use the pro-forma even where preliminary documentation relating to a convention claim shows different representations, provided that no additional features are present in the UK application which were absent in the foreign priority application, or vice-versa.

9. If the applicant or attorney is unsure as to the validity of the convention claim, he or she may continue to utilise the statutory three month period and submit formal documentation as normal.

10. Please note that this new practice has been implemented with immediate effect.