Chapter 17. Formalities Checking Procedure

Date Published

17.1  Purpose of the Formalities Check

The purpose of the formalities check is to ensure that any design that is accompanied by a request for registration is also accompanied by enough information to allow it to be entered on the Register.

Section 41 provides that if the Registrar is not satisfied in relation to the formalities of the design application the Registrar must notify the applicant stating:

a. the matters in relation to which the Registrar is not satisfied; and

b. that the applicant may request that the Registrar amend the application under section 28; and

c. that the application will lapse at the end of the period prescribed by the regulations for the purposes of paragraph 33(1)(b) unless, during that period:

i. the application is amended; or

ii. the applicant responds in writing to the notice stating why the applicant considers that the application does not need to be amended

and as a result of the amendment or response, the Registrar is satisfied as mentioned in section 39 or 40, as the case requires.

The applicant will be informed of any deficiency in their application in a “deficiency notice”.

The Registrar may notify the applicant by any means of communication provided the content of the communication is readily accessible so as to be usable for subsequent reference (s144D).

17.2  Deficiency Notices

Guidelines for an Acceptable Designs Pre-Registration Formalities Notice

A deficiency notice should include all of the deficiencies for all of the designs in an application. It should therefore clearly reference all of the design numbers that constitute that application.

All deficiencies should read clearly and provide sufficient information. Use the word processing codes where applicable, and always use plain English.  Target the notice to the applicant.  The notice must be sufficiently clear and comprehensive that the applicant is left in no doubt as to the deficiency being raised.

Where appropriate, options should also be provided indicating how the applicant might amend the application so that the design can be registered.  Explanations should be given, in broad terms of how to propose amendments to correct the deficiencies and what amendments are allowable.

If any deficiency is based on an assumption, then clearly state that assumption.  E.g. "Your application appears to show more designs than stated on your application form."

Further Notices

"Furthers" is the term used for applications that have had a deficiency notice issued. As these cases have time limits in which to correct deficiencies, the officer should see how close they are to the final date.

The applicant has 2 months from the date of the first notice in which to overcome any objections raised.  After that period, applications automatically lapse. If the applicant wishes to continue with the application a request for an extension of time under s 137 of the Designs Act will have to be lodged.

The officer should endeavour to process all furthers within the week they are received.  However, applications nearing the final date should be processed as soon as possible after receipt.

If a further report is raised, the officer should clearly indicate which deficiencies have been fixed, and those that have not.

Missed Deficiencies

If a deficiency was missed and not raised in the first notice it should be raised in a further notice.  Suitable apologies for the omission should be made.

Where appropriate, a free extension of time under sub-section 137(1) will be granted.

Other Matters

Section 137

Various sections of the Designs Act and Regulations have prescribed times in which particular actions must be completed or performed.  An applicant or owner can apply for an extension of time under s.137 to extend any of these prescribed time limits.

The situations that are likely to arise in formalities are:-

a. When an application is approaching the final date for a response and still wishes to continue with the application

b. If an application has lapsed because it has passed the reply date and the applicant wishes to continue with the application

c. If the applicant wishes to extend the date for lodging an application covering excluded designs

d. If the applicant wishes to claim convention priority where they have lodged their application more than six months after lodging the convention application.

Generally it will be the applicant or their attorney who will initiate an application for an extension of time to register an application before the application lapses, though the possible need for such an extension may be suggested by the formalities officer in a notice (if a notice is being sent).

Similarly, applications for extension of time to lodge divisional and convention applications will most often be initiated by the applicant or their attorney.  The formalities officer may advise the applicant that such extensions are available if it is likely that the applicant would not be familiar with such provisions.

Where a formal application for extension has been made (i.e. where all relevant documents and fees for the extension have been lodged) the application should be passed to the appropriate delegate for approval.

Dealing with Ad-Hoc Letters

Sometimes correspondence is received before the Formalities check occurs or is finalised. The Formalities officer should check the case file to ensure all correspondence is responded to and actioned appropriately.