D03.10 Period for completion of examination

Date Published

The scheme for examination entails an examination, written advice to relevant parties, the owner having an opportunity to propose amendments to the Register, and the Registrar reconsidering the Design.

The examination is completed when one of the following events occur:

i. The Registrar is satisfied as required under s.67(1) that either no ground for revocation has been made out, or a ground for revocation would be removed by the proposed amendments;

ii. The Registrar is satisfied as required under s.68(1) that the registration should be revoked; or

iii.The registration has ceased under s.48(1)(a) – without the Registrar being satisfied under either of 67(1) or 68(1).

Importantly, when the period prescribed in regulation 5.04 expires, the registration of the design ceases. That is, the owner has a specific time period from the date of the first examination notification to overcome all grounds of revocation – failing which the registration will cease (subject to the operation of s.137).

The normal period for completion of examination is 6 months from the date of the first examination notification [r.5.04(a)]. The period for completion may be a longer period in the following circumstances:

i. If material is provided under s.69 of the Act, and a new ground for revocation is included in an examination notification – the period is the later of 3 months from the date of the notification that first raises the new ground for revocation, or 6 months from the date of the first examination notification [r.5.04(b)];

ii. If the owner requests to be heard under s.68(4) [r.5.03(6)(d)] – such period as the Registrar determines [r.5.04(c)], including any appeals [r.5.04(c)(iii)]

iii. Examination is discontinued because of relevant court proceedings [s.63(4)] – such period as the Registrar determines [r.5.04(c)].

Note: When s.63(4) applies, the examination is merely put on hold pending the conclusion of the court proceedings, and is resumed after the conclusion of those proceedings.  See D03.12 Interface with Court Proceedings.

In routine examination circumstances, the Registrar will not initiate formal proceedings for revocation under s.68(1). Where the owner disagrees with the examination, it is for the owner to request a hearing under s.68(4). Each examination notification should include a note to the owner informing them of their right to request a hearing under s.68(4) before the end of the 6-month period for completing examination.


D03.10.1  Last-minute responses; time for filing a request for hearing

It may sometimes happen that the owner responds to an examination notification very close to the end of the 6-month period for completion of examination. In those circumstances it is expected that examiners will take all reasonable steps to consider the response within the time remaining. (And in such circumstances it would be expected that the owner or their agent will have contacted the examiner by telephone to advise them of the response just filed, to facilitate timely consideration by the examiner.)

Where an owner responds to an examination notification near the end of the 6-month period, they may have concern about the complete loss of the Design rights if the examiner does not agree with their response. As a result owners might include with such a late response a precautionary request for a hearing under 68(4). In such circumstances examination will proceed as follows:

  • The examiner will make all reasonable effort to deal with the examination in the time remaining [failing which an extension of time under s.137(1) may be applicable];
  • Where the examiner is satisfied as required under s.67(1) within the time remaining, proceed under that provision. No action in respect of the request for a hearing is required;
  • Where the examiner considers that a ground for revocation remains:
    • issue another examination notification;
    • issue an Invitation to pay with respect to the request for hearing; and
    • advise that the provisions of s.68 apply – but only if the hearing fee is paid.
  • Where the examiner is unable to be satisfied that there is no ground for revocation in the time available:
    • issue an advice that the response was filed too late for the examiner to consider the response and be satisfied that there are no grounds of revocation;
    • issue an Invitation to pay with respect to the request for hearing;
    • advise that the provisions of s.68 apply – but only if the hearing fee is paid; and
    • on payment of the hearing fee, complete the consideration of the response. If at this stage the examiner is satisfied that there are no grounds of revocation, the Registrar can proceed under s.67(1) without a hearing – but there will be no refund of the hearing fee. Otherwise the matter proceeds to a hearing.

Note: In the circumstances of last-minute responses being filed with a precautionary requests for a hearing, payment of the fee for requesting a hearing when filing the response is to be discouraged. The fee for requesting a hearing will only be refunded in exceptional circumstances; in particular, it will not be refunded merely because the hearing is no longer required. Owners should use the Invitation to Pay mechanism to ensure a hearing fee is paid only if it is really needed.