D11.7 Period of Extension to be Granted

Date Published

D11.7.1 General Principles

The length of the period granted as an extension is to be determined from the circumstances of the action which led to the necessity for an extension. Needless to say, this period may not necessarily coincide with the period actually applied for.

The general rule is:

where error or omission, or circumstances beyond control are involved, the applicant for the extension is entitled to an extension period - net of administrative delays and the like - which equates to the period which would have been available had the error, omission etc. not occurred.

This rule applies equally to s 137(1) of the Designs Act 2003 (Cth) as it does to s 137(2). If this period is inadequate to meet the purpose of an extension under s 137(2), the applicant has not, on the face of the application, justified the extension.


D11.7.2 Extensions for Completion of Examination

Most extension of time requests will relate to matters where the end of the period to be extended is known at the time the request is filed. However when an extension of time for the completion of examination is sought, the completion of the examination will not occur until after the extension has been granted, and then only after the examiner has considered the application. Additionally, if the examiner issues an adverse report there will be further time required for that report to be considered by the owner, a response filed, and the examiner consider that response.

Accordingly, when applying for an extension of time to complete examination the applicant will need to request an extension of time sufficient to allow for these actions to occur. Additionally, if the extension is for a period in excess of 3 months, an additional period needs to be included to cover the times associated with advertising the request under s.137(4), the one-month opposition period under reg 11.13(3), and the subsequent period to grant the extension. Usually an additional two months is sufficient for this purpose.

Note: If the extension is opposed under s 137(5) and is subsequently granted, the Registrar will deal with the period between the filing of the opposition and the conclusion of that opposition as being a ‘circumstance beyond control’.


D11.7.3 Renewal due before Design restored

Where:

  • a design has ceased through failure to complete examination; and
  • an extension of time is filed for the purposes of completing examination

it can happen that the time for renewing the design (s 47) expires in the period after the request for an extension of time has been filed, but before the extension of time is granted.

In such circumstances, the owner might be reluctant to seek renewal of the design until the outcome of the extension of time application is known. However the period for renewal is set by reference to the filing date, and is not conditioned on whether or not the design is ceased. Consequently the owner will need to ensure that renewal is timely requested on an assumption that the Design will be restored – and not wait until it is restored. Failure to do this would be a new `error or omission' not covered by the s 137 request under consideration.

See G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 (6 August 2003), and International Business Machines Corporation v Total Peripherals [2002] APO 44.

If at the time the extension of time has been filed both the time for completing examination, and requesting renewal of the design, have expired, the extension of time request should seek an extension of both time limits.

See also D11.4.3.