- Home
- Introduction
- Part 1 - Formalities
- 1. Classification
- 2. Entitlement
- 3. Applicant Name
- 4. Applicant Address
- 5. Address for Service
- 6. (reserved)
- 7. Product Name
- 8. Section 43
- 9. Statement of Newness and Distinctiveness
- 10. Convention Details
- 11. Excluded Design Details
- 12. Registration / Publication Request
- 13. Designer Name
- 14. Representations
- 15. Further Designs
- 16. Amendments
- 17. Formalities Checking Procedure
- Part 2 - Examination
- D01 Citation Index
- D02 (reserved)
- D03 Examination Process
- D03.1 Overview
- D03.2 Requesting examination - requirements
- D03.3 Who may request examination?
- D03.4 Which Designs may be examined?
- D03.5 Court proceedings
- D03.6 Handling concurrent requests for examination
- D03.7 Handling requests for examination when a Certificate of Examination has previously issued
- D03.8 Further reports
- D03.9 Being 'satisfied'
- D03.10 Period for completion of examination
- D03.11 Withdrawal of request for examination
- D03.12 Interface with Court Proceedings
- D03.13 Intention to Certify
- D03.14 Material provided by a 3rd party
- D03.15 3rd Party Initiated Examinations
- D03.16 Revocation during Examination
- D03.17 Expedited Examination
- D04 Identifying the Design
- D04.1 Introduction
- D04.2 Design in relation to a product
- D04.3 What is a product?
- D04.4 Overall appearance, and visual features
- D04.5 Interpretation of representations
- D04.6 Role of a Statement of Newness and Distinctiveness
- D05 Designs which must not be registered
- D05 Designs which must not be registered - s.43, Reg 4.06
- D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b)
- D05.2 Integrated circuits [s.43(1)(c)]
- D05.3 Medals [reg 4.06(a)]
- D05.4 Protection of Word 'Anzac' Regulations
- D05.5 Paper money, securities [reg 4.05(c)]
- D05.6 Scandalous designs
- D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)]
- D06 Priority Dates
- D06.1 Background, general issues
- D06.2 Priority date - Convention Applications
- D06.3 Priority date - Excluded Designs
- D06.4 Priority date - Applications by an entitled person (s.52, 53 or 54)
- D06.5 Priority date - Converted Applications
- D07 Prior Art Base
- D07.1 General Information/Background
- D07.2 Publicly used in Australia
- D07.3 Published in a document within or outside Australia
- D07.4 Designs disclosed in applications
- D07.5 Exhibitions, Unauthorised disclosures
- D07.6 Copyright overlap - s.19
- Appendix - Examiner's Worksheet
- D08 Searching
- D09 Assessing Newness and Distinctiveness
- D10 Amendments
- D10.1 Overview
- D10.2 Ambit of s 28 amendments
- D10.3 Ambit of s.66 amendments
- D10.4 Allowabililty - inclusion of matter not in substance disclosed
- D10.5 Allowability - increasing scope of the Design Registration
- D10.6 Amendments of Statement of Newness and Distinctiveness
- D11 Extension of Time - s.137
- D11.1 Introduction
- D11.2 s.137(1) - Error or Omission by the Registrar
- D11.3 s.137(2) - Summary of the Principles of Law
- D11.4 Making the Application - s.137(2)
- D11.5 Registrar's Discretion - s.137(2)
- D11.6 Advertisement of Extension - Subsection 137(4)
- D11.7 Period of Extension to be Granted
- D11.8 Common Deficiencies
- D11.9 Protection and Compensation Arrangements
- D12 Assignment etc of Designs, the Registrar
- D12.1 Introduction
- D12.2 Registering Assignments
- D12.3 Registering other interests
- D12.4 Correction of the Register - Regulation 9.05
- D12.5 Rectification of the Register by a court
- D12.6 Trusts, Bankruptcy, Insolvency
- D13 Ownership Disputes
- D13.1 Overview of ownership disputes
- D13.2 S.29 disputes
- D13.3 S.30 Disputes associated with recording assignments
- D13.4 S.52 Revocation relating to Entitled Persons
- D13.5 Application by Entitled persons after revocation
- D14 Publication, File access
- D14.1 Background, general issues
- D14.2 Documents not publicly available
- D14.3 Interaction with the Freedom of Information Act 1982
- D14.4 Production of documents under s.61(2)
- D14.5 Right of Lien
- D15 Surrender of a Design
- D15.1 Overview
- D15.2 Processing an offer to surrender
- D15.3 Discretionary considerations in Accepting the Offer
- D15.4 Surrender by consent - and ownership matters
- D16 Prohibition Orders
- Part 3 - Classification
- Introduction
- Amendments to the Eleventh Edition of the Locarno Classification
- Amendments to the Tenth Edition of the Locarno Classification
- Class Heading Summary
- Class 01 - Foodstuffs
- Class 02 - Articles of clothing and haberdashery
- Class 03 - Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 - Brushware
- Class 05 - Textile piecegoods, artificial and natural sheet material
- Class 06 - Furnishings
- Class 07 - Household goods not elsewhere specified
- Class 08 - Tools and hardware
- Class 09 - Packages and containers for the transport or handling of goods
- Class 10 - Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 - Articles of adornment
- Class 12 - Means of transport or hoisting
- Class 13 - Equipment for production, distribution or transformation of electricity
- Class 14 - Recording, communication or information retrieval equipment
- Class 15 - Machines not elsewhere specified
- Class 16 - Photographic, cameras, cinematographic and optical apparatus
- Class 17 - Musical instruments
- Class 18 - Printing and office machinery
- Class 19 - Stationery and office equipment, artists and teaching materials
- Class 20 - Sales and advertising equipment, signs
- Class 21 - Games, toys, tents and sports goods
- Class 22 - Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 - Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
- Class 24 - Medical and laboratory equipment
- Class 25 - Building units and construction elements
- Class 26 - Lighting apparatus
- Class 27 - Tobacco and smokers supplies
- Class 28 - Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 - Devices and equipment against fire hazards, for accident prevention and for rescues
- Class 30 - Articles for the care and handling of animals
- Class 31 - Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 - Graphic symbols and logos, surface patterns, ornamentation
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
- RiO prioritises the request above standard examination requests (i.e. it is expedited).
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
- 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
- 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
- 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].
- RiO notifies both parties indicating the examiner’s intention to issue a Certificate of Examination, enclosing the statement of reasoning. The notification will state:
- That the design has been examined [section 67(2)(a)].
- If the clear report is dependent on amendment(s) being made, the details of the proposed amendment(s) [section 67(2)(b)].
- That a Certificate of Examination is to be issued [section 67(2)(c)].
- 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.
- 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.
- 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.
- 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.