D03.15 3rd Party Initiated Examinations

Date Published

Background

Section 63(1) permits any person to request examination of a registered design [D03.3].  When a person other than the registered owner or a prescribed court requests examination, it is referred to as a 3rd party examination request, and the person as a 3rd party.

A 3rd party is a party to the examination process and has a right to be heard on the outcome of the examination.  The examiner must not directly engage in any argument with the 3rd party on matters of newness and distinctiveness.


Pre-examination processes

The 3rd party must pay half the examination fee [Regulation 11.06], and the registered owner is invited to pay the other half [Regulation 11.05]. If the registered owner does not pay its half of the fee within two months of the invitation, the registration ceases [Regulation 11.05(2)].

3rd party examination requests are often accompanied by material submitted under section 69. A copy of this material is sent to the registered owner.  The Designs Administration team in COG are responsible for the pre-examination process.


Initial examination processes

  1. RiO prioritises the request above standard examination requests (i.e. it is expedited).
  2. The examination task allocation itself does not change and the examiner carries out examination as normal. The consideration of any section 69 material is in addition to this.


First adverse report

  1. The examiner drafts and issue’s the first adverse report as normal. RiO will provide a copy of this notification, with a covering letter, to the 3rd party automatically [Regulation 5.03(8)].

Further adverse report

  1. Upon receipt of a response from the registered owner (and if the objection(s) is to be maintained), the examiner drafts and issue’s the further adverse report as normal. RiO will provide a copy of this notification, with a covering letter, to the 3rd party automatically [Regulation 5.03(8)].
  • Any response from the 3rd party should be considered, but not replied to directly. Instead, the examiner may refer to information from the 3rd party response in the further adverse report (if a report is to be issued), and must incorporate a copy of the 3rd party response to the registered owner in the further adverse report.

Clear report

  1. If a clear report is to be issued the file is processed as normal. RiO will prompt for a ‘statement of reasons’. This is particularly important if the file contains material submitted under section 69 [D03.14] (including submissions or information from the 3rd party). The examiner drafts a record of reasoning in line with Product Quality Standard 3.3 [D02].
  2. RiO notifies both parties indicating the examiner’s intention to issue a Certificate of Examination, enclosing the statement of reasoning. The notification will state:
    1. That the design has been examined [section 67(2)(a)].
    2. If the clear report is dependent on amendment(s) being made, the details of the proposed amendment(s) [section 67(2)(b)].
    3. That a Certificate of Examination is to be issued [section 67(2)(c)].
    4. That the parties have an opportunity to be heard before a final decision is made [section 67(3)], and set a deadline for the hearing request.
  3. If nothing comes in on the file by the hearing request deadline the file is returned, by RiO, to the examiner for it to be certified.
    1. If the 3rd party requests a hearing before the deadline, this request is processed by The Designs Administration team in COG in the first instance, and then by Hearings.
    2. If the 3rd party raises further argument or files material under section 69 and the examination period is not over, the examiner will consider whether to issue a first or further adverse report (as appropriate). Otherwise, if the deadline to request a hearing has passed, the examiner issues the clear report as normal.