D11.2 s.137(1) - Error or Omission by the Registrar...

Date Published

D11.2.1 General Considerations

Extensions of time under this subsection arise because of an error or omission made by the Registrar or a Deputy Registrar; an employee of the Designs Office; or a person providing, or proposing to provide, services for the benefit of the Designs Office. Note the use of the word 'must' – which means that once the existence of a relevant causative error or omission has been established, there is no discretion about whether an extension should be granted.

The duty statements for all employees of IP Australia include the duty to assist the Registrar of Designs to perform his or her function. Consequently, all employees in IP Australia are an 'employee of the Designs Office'.

The granting of an extension of time under this provision entails an express admission that the Registrar has made an error or omission. Because such admissions may have other legal consequences, extensions of time under s 137(1) of the Designs Act 2003 (Cth) are not lightly granted. However, where it is clear that the Registrar has made an error or omission, the existence of such other consequences is irrelevant to whether or not an extension should be granted.

The legislation does not require the applicant provide a declaration setting out the grounds on which the application is made. Indeed, usually the applicant will have no real knowledge of the relevant facts. However, it is sometimes necessary that the applicant provide a declaration, because the Registrar is not aware of the relevant facts – for example, if a person misses a time limit pursuant to receiving misinformation from the Office.

Example: An Attorney acted on the basis of information obtained by querying IP Australia’s electronic information system. At the time this was done, incorrect data had been entered on the system by an Office employee; by the time the application for extension was received, that data had been corrected – so there was no way the delegate could verify the Attorney's allegation. The problem was resolved by the Attorney filing his own print out (including the incorrect data) annexed to an explanatory declaration.

A similar solution would apply where oral information only is involved – although file notes on the case file might provide sufficient evidence to support the action without the need for the applicant to file a declaration.

A finding that there has been an error or omission is not in itself enough to require the grant of an extension of time. There must be a causal link between the error or omission and a relevant act that must be done within a certain time and which either is not done or cannot be done within that time. The causal link is described by the use of the word 'because' in s 137(1). Errors of a person which are claimed to be due to incorrect advice from the Registrar will generally fall under s 137(1) if the person:

  • sought advice from the Registrar
  • in seeking the advice, provided all relevant information, or provided sufficient information for the Registrar to realize that further information was required before providing the advice
  • the advice given was demonstrably wrong
  • the applicant acted on that wrong advice, and
  • as a result, a relevant act was not done within the required time.

See R Thomas & A Garnham v Jeijing Pty Ltd (1994) 29 IPR 441, and the decision on review Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144.

In Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals Inc v Amgen, Inc [1997] APO 69 (19 December 1997), the potential opponent to a s 223 (Patents Act 1990) application sought copies of the material in support of that application from the Patent Office. That material was not provided until after the opposition period had expired. The potential opponent did not file an opposition until after it had received the material. The delegate, in allowing an extension under section 223(1) (Patents Act 1990), held that the failure of the Commissioner to timely respond to the request for information was an omission that prevented Amgen from making any responsible decision as to whether they should file an opposition, and therefore prevented it from filing a notice of opposition. In doing so, the delegate stated:

'However it cannot be in the public interest, let alone the interests of either party, for there to be any expectation that an opponent must file an opposition in ignorance, where their ignorance of what is to be opposed is beyond their control. Thus in cases where an opponent is unable to ascertain from the Patent Office any material fact concerning that which might be opposed, I do not consider it reasonable (let alone desirable) to expect the opponent to file what must be (in such circumstances) a speculative opposition.'

Where the necessity for an extension arises pursuant to the temporary loss of a case file or a fee payment within the Office, the circumstances surrounding the problem are entirely within the Office and within the knowledge of the delegate (perhaps after appropriate enquiry), and it is generally inappropriate to require the applicant to file a declaration.

Comment: Where a response has been received to an examination notice, the case file has gone missing, and the time for completion of examination is about to run out – the owner should be contacted, the situation explained, and the owner reassured that s 137(1) will be used to extend the time for completion of examination for a period equal to the period in which the file was not located. If a third party requested examination, they should similarly be advised.

Where a response to an examination notice is received very close to the end of the period for completion of examination, and the response is not considered before the time for completion has expired, the question may arise of whether the time for completion of examination should be extended under s 137(1). Generally speaking, if the response was filed with sufficient time for the examiner to properly consider the response and the examiner failed to attend to the response, s 137(1) will be enlivened.

Note: When a response is filed close to the date for completion the owner has some responsibility to ensure the examiner is aware that the response has been filed – such as by telephone contact, and/or faxing the response to the examiner. In particular, filing a response at a State Office of IP Australia on any of the last few days for completion of examination will unlikely give the examiner enough time to consider the response before the time for completion of examination has expired, and any extension of time would likely need to be dealt with under s 137(2)

D11.2.2 Advertisement of section 137(1)

Extensions of time granted under s 137(1) must be advertised as allowed [reg 11.13(4)]. Extensions under s 137(1) are not advertised for opposition purposes under s 137(4) as they do not involve an ‘application’ for an extension of time as in s 137(2).

However, in some cases there is a known third party whose interests may be adversely affected by granting the extension. In these cases, the Registrar will not proceed to grant such extensions until the Registrar has ascertained whether that party objects the extension [any such objection being limited to the question of whether there has been a relevant error or omission by the Registrar.]

Comment: This situation would most likely arise in examination proceedings, where a third party who has requested examination is clearly an interested third party. The hearing is limited to the issue of whether there is a relevant causative error or omission, since once that fact is established there is no discretion involved in the granting of the extension. For an example, see R Thomas & A Garnham v Jeijing Pty Ltd (1994) 29 IPR 441, and the decision on review Jeijing Pty Ltd v Commissioner Of Patents & Ors. (1995) AIPC 91-144.

D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner

Section 137(1) may be applicable to extend the time for completion of examination where an examination notice was established but was not received e.g. because it wasn’t sent, or it was sent to the wrong address for service.

Where it is clear that the first examination notice was not dispatched (for instance, the report is in the case file), the appropriate remedy is to reissue the first notice rather than grant an extension under s 137(1) – and reset the time for completion of examination. [Note that s 66(2) requires the Registrar to give a copy of each notice to the owner, and the time for completion of examination runs from the date of that notice.]

Note: If the report was sent to the correct address but was delayed or not received (e.g. delayed or not delivered by post), s 137(2)(b) is the appropriate remedy. If the report was received but misplaced by the applicant, s 137(2)(a) is the appropriate remedy.