23.9. Extensions of time: Extensions process

To request an extension, the customer must lodge all the relevant documents – i.e. the extension of time form and any necessary supporting documents such as a statutory declaration or a declaration under the Designs Act. At the time of filing the request they also need to pay the extension fee.

The Customer Experience Group then considers the request and decides whether to grant it. They may seek advice from the Trade Marks and Designs Group Quality and Practice Section.

We may be required to advertise the requested extension before granting it.

Application for extension

An application for extension must be accompanied by a declaration setting out the grounds on which the application is made (reg 11.13(1)).

If the customer cannot file the declaration at the same time as the application form, they should file it separately as soon as possible after filing the form. They have 2 months to do this. At the end of 2 months we set a hearing to refuse the extension. If the declaration arrives before the hearing, we consider it and cancel the hearing if it is no longer necessary.

Delay in filing the declaration is a factor the Registrar needs to consider when deciding whether to grant the application.

Technically we have not received the application until the declaration is filed (reg 11.13(1)).

Extension fee

See Fees.

Application before a design lapses

Generally the customer will initiate an application for an extension of time to register the design before it lapses.

When issuing a deficiency/formalities notice (s 41), the formalities officer will sometimes advise the customer that they may need to request an extension.

Application after a design lapses

If a design lapses but the customer has made a response and obviously wants to continue the registration process, the formalities officer will issue a deficiency notice raising an objection under the heading ‘Extension of time’. This notice should also:

• raise any other deficiencies
• note that the final date for a response has passed.

If the customer seems unlikely to know that an extension is possible, the formalities officer can inform them that they have the option to request one.

Common deficiencies

The following deficiencies are common in applications for an extension of time. In these cases, we will write to the customer advising them to correct the mistake(s).

On the application form

• Specifying the wrong period of extension – e.g. the design lapsed 2 months ago and the requested extension is only for 1 month
• Referring to the wrong action (this often happens with applications covering excluded designs)
• Referring to an action that does not have a time limit (e.g. to file a first-instance application)
• Not referring to all matters that will need to be dealt with if the request is granted – such as the time for requesting registration (for extensions of the priority period), and potentially the time for requesting an extension of term (for extensions of the time for completing examination).
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With the declarations

• Making assertions based on hearsay (e.g. ‘I declare that the [foreign] associate has told me that his client has told him that …’) is a particular problem if there is no good reason why the person with direct knowledge of the circumstances cannot provide a declaration. Hearsay evidence can be appropriate if, for example, the declaration is about an error committed by a former employee
• Seeming to provide selective extracts of supporting documents and avoid documents that may be less favourable
• Mentioning supporting documents but not providing copies of them.