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