D11.1 Introduction

Date Published

The extensions of time provisions in the Designs Act 2003 (Cth) are provided by s 137 and reg 11.13. Section 137 is universally applicable. Section 137 also applies to applications proceeding under the preserved provisions of the Designs Act 1906 (Cth) (1906 Act) – see s 153(2).

The provisions of s 137 are essentially the same as s 223 of the Patents Act 1990 (Cth), and s 224 of the Trade Marks Act 1995 (Cth). Accordingly, the precedent under those Acts provides relevant precedent for corresponding provisions of s 137 of the Designs Act 2003.

When considering precedent under the Trade Marks Act 1995, regard must be had to the effect of the exclusions from an extension of time set out in reg 21.28 of that Act.

The Designs Act 2003 provides for the possibility of excluding an extension of time being granted for certain matters, by way of the definition of ‘relevant act’ at the end of s 137. Currently (2020) no actions have been prescribed for that purpose. Accordingly, any time period set in the Act or Regulations for the doing of an act is capable of being extended.

D11.1.1 Calculating the expiration of a Time Period under the Designs Act

Section 137 applies when an act required to be done within a certain time is not, or cannot be, done within that time. The ‘rules’ about how to calculate that period are as follows:

1. There must be a relevant period recognized in the Act that can be extended. Thus, the time for filing a convention application is capable of being extended, but there is no relevant period for filing a first-instance application.

Note: An extension of time does not change the date on which the relevant action occurred. An extension of time merely extends a relevant period to the actual date of the relevant action, thereby maintaining the associated benefit.

2. The basis for calculating the end of a period is primarily governed by s.36(1) of the Acts Interpretation Act 1901 (Cth). Where in an Act any period of time, dating from a given day, act, or event, is prescribed or allowed for any purpose, the time shall, unless the contrary intention appears, be reckoned exclusive of such day or of the day of such act or event.​​​​​​​

Importantly, this does not reset the date of the period for the purpose of calculating subsequent periods.

3. The basic rule for calculating a period in months is that the due date is a date having the same day number. For example, one month from the ‘x’ of March is the ‘x’ of April. Where the start date is the last day of a month, there may be no corresponding day number in the future month. In this case the relevant day is the last day of the future month.

When the start date is the last day of a month, the requirement that the period is exclusive of the given day is particularly relevant. The approach is:

  • Add 1 to the starting date;
  • identify the future date having the corresponding day number,
  • subtract 1 day.

For example:

  • 1 month from the 31 March is 30 April. [31 March + 1 day = 1 April. 1 April + 1 month = 1 May. 1 May less 1 day = 30 April].
  • Similarly, 1 year from 29 February is 28 February. [29 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 28 February].
  • Conversely, 1 year from 28 February in a non-leap year is 29 February in a leap year. [28 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 29 February].

[See the definition of Month in the Acts Interpretation Act 1901].

4. Where a period expires on a day where IP Australia (or any of its sub-offices) is not open for business, the calculation of the last day when the action can be done is governed by s 136A and regs 11.32 and 11.33 – and any declarations under s 136A(2)(b) [which are published in the AOJD]. Section 36(2) of Acts Interpretation Act 1901 does not apply [s 136A(6)].

This provision has the following effects:

  • If IP Australia is closed for business at all locations, the action can be done on the first subsequent day when IP Australia is open for business; and
  • If IP Australia is closed for business at some (only) of its locations, the action can be done at that location on the first subsequent day when IP Australia is open for business at that location. If the action is done on a subsequent day at a location which was open on the relevant day, the action will be out of time.

Note: If the action is done by electronic means, the critical consideration is whether IP Australia in Canberra was open for business on the relevant day. Where IP Australia in Canberra was open for business on that day but a State Office was closed, an action undertaken the next day at that State Office via electronic means (such as fax) does not obtain the benefit of the closure at that State Office, and will be out of time.

Where the relevant action to be done within the time period is an action by the Registrar, it is the location of the person exercising the Registrar’s powers that is relevant. This is very important in examination. When the final day for completion of examination falls on a day that is not a holiday in Canberra, the fact that it is a holiday in another location does not affect when the design ceases for failure to complete examination. That is, the owner cannot rely on the local public holiday to file a response the following day.