D11.6 Advertisement of Extension - Subsection 137(4)

Date Published

D11.6.1 General Requirements

Where an application is made for an extension of time for more than 3 months, it is mandatory to advertise the extension – s 137(4) of the Designs Act 2003 (Cth). In response to the advertisement, a person may oppose the granting of the extension, as provided in s 137(5).

The requirement to advertise is mandatory where the total extension sought is based on a single set of grounds under para (2)(a) or (2)(b).

For example, suppose extension is required for the purpose of completion of examination. Initially, a period of 3 months only is applied for, because this period was perceived as adequate, even though the circumstances under para (2)(a)/(2)(b) justified a much longer extension. If it is then found that the 3 months is inadequate, the applicant would be entitled to the grant of a further period. However, as soon as the total period exceeded 3 months, s 137(4) has effect, and the total extension must be advertised.

Note that the decision to advertise is not based on the fact that the total period sought for a single purpose (here, completion of examination) exceeds 3 months, but that the total extension based on a particular set of grounds exceeds 3 months. That is, it would be legitimate to grant an extension (unadvertised) for completion of examination, of a 3 month period, based on grounds under para (2)(a), and to subsequently grant a further 3 months extension period for acceptance, based on grounds under para (2)(b), or even different grounds under para (2)(a)

The advertisement requirement of s 137(4) arises in respect of 'an application for an extension…' and thus only extends to situations involving an extension of time sought under s 137(2).

Upon granting an extension of time, a notice of such grant must be published (see reg 11.13(4).

D11.6.2 Directing Advertisement

Requests for an extension of time are not automatically advertised under s 137(4). Rather the Registrar will give consideration to the request to the point of being satisfied that grounds for the extension have been established so that, in the absence of any opposition being filed to the extension application, the extension could be granted. When the Registrar is prima facie satisfied that an extension could be granted, she will direct advertisement under s 137(4).

As to the degree of satisfaction needed, this will require the existence of at least 'some evidence on which the {Registrar} could decide to grant the extension of time' even though there is other evidence on which the application could be refused. See Kimberly-Clark Corp v Proctor & Gamble Co, (1992) AIPC 90-869.

In the event that the Registrar fails to be prima facie satisfied that an extension is justified, the Registrar will usually request the applicant to file further material in support of the request.

If the Registrar forms the view that an extension could not be granted, she may proceed to refuse the request under s 137(6) – without advertisement under s 137(4).

If the Registrar does not advertise the application, the application cannot be opposed and the Registrar must refuse to grant the application. This provision saves third parties from going to the expense of filing an opposition to the grant of an application that the Registrar does not intend to grant.

Note: If following the hearing the Registrar is not satisfied that the extension should be refused, the application will be advertised as usual under s 137(4). Note that any decision to advertise under s 134(4) cannot pre-empt the Registrar’s decision in any opposition that might be filed – and will therefore be of very limited scope.