D11.4 Making the Application - s.137(2)

Date Published

D11.4.1 General Comments

Regulation 11.13(1)(b) of the Designs Regulations 2004 requires that for the purposes of s 137(2) of the Designs Act 2003 (Cth) an application for extension must

  • be in the approved form (form D/00/311 or equivalent)
  • have with it a declaration setting out the grounds on which the application is made.

Situations may arise where it is not possible for the applicant to file the declaration with the application form. In such cases the declaration should be filed as soon as practicable thereafter. Delay in filing the declaration is a factor the Registrar needs to consider when exercising discretion on the application. In fact, given the provisions of reg 11.13(1), strictly the application is not made until such time as the declaration is filed.

Where a declaration is not filed with the application, the Registrar will allow 2 months for a party to file their declaration. If the declaration is not filed within this time, the matter will be set for hearing with a view to refuse the s 137 request. Any declaration received before the hearing will be considered as quickly as possible, with the hearing being cancelled if it is no longer necessary.

D11.4.2 Person concerned: Change of ownership

Usually, the applicant or owner of record makes the application under s 137. However, occasionally there is a change of owner of the design or application that has not been registered or recorded before the s 137 application is made. In such cases, processing of the s 137 application will be conditional upon the filing of a request to record the transfer of interest from the applicant or owner of record.

If ownership of the design changed before the design ceased (e.g. by an assignment dated before the ceasing date), the change of owner will generally need to be registered before the s 137 application is advertised for opposition purposes. In order to overcome the type of issues that arose in Reilly v Commissioner of Patents (1996) 36 IPR 314, the assignee will need to explain in their s 137 application any failure to record the assignment at an earlier date. Depending on the facts, a deliberate intention not to record an assignment may be prejudicial against a favourable exercise of discretion by the Registrar.

Reilly involved a situation of a bankrupt who failed to disclose his Patent to his trustee in bankruptcy (who would have been entitled to be recorded as the owner). There was also a deed of assignment (not signed by the assignee) purporting to assign the patent in the event of him becoming bankrupt.

In the case of an assignment that was made after the design ceased, the Registrar will record any change in title or interest on restoration of the design. Until that time the s 137 application will need to proceed in the name of the owner of record. In this case, the relevant error or omission is necessarily associated with the actions of the owner of record, and the evidence in support of the extension must be on that basis.

In any of the above cases, the s 137 applicant will need to establish that an error or omission was made by the person concerned at the relevant time. In The University of Newcastle Research Associates Limited [2001] APO 64 (12 November 2001), the equitable owner took an assignment after the owner of record had made a deliberate decision not to proceed (with national phase entry). As a consequence, the equitable owner was unable to satisfy the requirements of s 137.

D11.4.3 Extension of priority period – requesting Registration

As a general principle, an extension of time is only granted for those matters for which an extension is sought. Furthermore, prior to the grant of the extension of time the applicant needs to act on any time limits that arise in the interim on the assumption that the extension will be granted.

A priority claims needs to be made at the time of filing [D06.1.3]. If the application is amended after filing to add a priority claim, an extension of time under s 137 will be required. Similarly, if the details of the priority claim are amended after filing, and that amendment has the effect of creating a new priority claim, an extension of time under s 137 will similarly be required. (A convenient test is whether the amendment of the priority claim is effectively the correction of an obvious mistake – see D12.4.2)

However, the effect of any such extension on the requirement to request registration or publication within 6 months of the priority date [reg 4.01(2)] must be considered. In particular, if a request for registration or publication has not been filed, will the grant of an extension of time for making the priority claim result in the application lapsing through not having requested registration or publication? In such cases the applicant should file the request for registration or publication no later than the time of filing the request to extend the time to claim convention priority – with the extension request expressly referring to both the time period for filing the application, and the time period for requesting registration. If the applicant files the request for registration after filing the request to extend the priority period, a new error or omission is involved – and a separate extension of time will be required.

See also D11.7.3.

D11.4.4 Fees Payable

Fee items 7 and 8 of Schedule 4 of the regulations indicate the fees payable for extensions under s 137(2). In all situations, the fee payable is determined by the length of the extension granted, not by the date on which the extension is granted.

Regulation 11.01(5) specifies that the fee is payable at the time of filing the request.  Under reg 11.06, if the s 137 fees have not being paid on filing then an ITP (invitation to pay) will issue. Failure to issue the notice within time will enliven the provisions of reg 11.10. If the fee is not paid within 2 months, the request for an extension of time is deemed not filed [reg 11.06(2)].

If the applicant withdraws the request for an extension of time, fees paid for filing the s 137 request are generally not available for refund.