The Registrar does not have to grant an extension even if it is justifiable under s 137(2) (see Acceptable reasons for extension). In using their discretionary power to refuse or grant an exemption, the Registrar will consider:

the balance of factors including the private interests involved and the public interest.
whether the applicant has fully and frankly disclosed the circumstances leading to the error or omission
whether an extension would serve a useful purpose.

Balance of factors

In balancing the relevant factors, the Registrar should lean towards exercising discretion in favour of the applicant for extension. The Registrar is entitled to proceed on the basis that it is more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time (Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at [479]).

Full and frank disclosure

An important consideration is whether an applicant for extension has given a full and frank disclosure of all the circumstances that led to the error or omission, including disclosure of the chain of causation.

See the finding in Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 13 IPR 569 (at 583) that in order to make out a proper case justifying an extension:

… an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.

Note, however, the discussion in Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 (at 479) of the context of these comments. See also G S Technology Pty Limited v Commissioner of Patents (2004) 63 IPR 9 (at 82).

Purpose of extension

If it is clear that the extension would serve no useful purpose, the Registrar will refuse it. For example, if it is obvious that we will not be able to issue a certificate of examination under the terms of the Act, we should not grant an extension to complete the examination.

See New Horticulture Pty Ltd v Enviro Pak Pty Ltd [2016] ADO 2 where the status of the design right was considered. At the time of the decision the design had ceased. The term of registration had expired and could not be extended. Even if the extension of time was granted, the owner’s rights in the design had ceased.

Private interests

Considering private interests is a particular issue where it is clear that a third party is interested in the design – such as where a third party has requested examination and the owner is seeking an extension of the time for completion of examination. Even if there is no need to advertise, the Registrar may invite the third party to comment on the extension (see reg 11.22(1)).

Public interest

Considering the public interest most often relates to the issue of delay. Excessive delay in filing an application for extension (including declarations) is potentially detrimental to the public interest. The Registrar needs to be satisfied that any unnecessary delay has not been caused to any significant extent by the actions of the customer for extension (Sanyo v Commissioner of Patents (1996) 36 IPR 470).

Precedent

The Registrar’s approach to exercising discretion in relation to extensions is informed by:

Sanyo v Commissioner of Patents (1996) 36 IPR 470 at 479
Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243
A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213
New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [2001] APO 48 (21 September 2001)
Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 156
Comcare v A’Hearn (1993) 119 ALR 85, particularly at 88
New Horticulture Pty Ltd v Enviro Pak Pty Ltd [2016] ADO 2 at 47 onwards.