23.11. Extensions of time: Request from an unrecorded new owner

Occasionally a change of ownership of a design is not recorded or registered before the new owner applies for an extension application. In these cases, we cannot process the extension application unless we receive a request to record the transfer of ownership.

The applicant for extension will need to establish that the error or omission was made by the then owner/agent at the relevant time.

Example

A relevant patents decision occurred in The University of Newcastle Research Associates Limited [2001] APO 64 (12 November 2001). In this case the transfer of ownership occurred after the previous owner (i.e. the person on record as the owner) had decided not to take the next step in registering the design. The issue here was that the new (current) owner is not entitled to apply for an extension based on what a previous owner did not do when the design belonged to them. To satisfy s 137(2)(a) or 137(2) (b), the error/omission or circumstances beyond control must relate to the applicant.​​​​​​​

Before the design ceased

If the change of ownership occurred before the design ceased, we will need to register this change before we can potentially advertise the extension application. In their extension application the new owner will need to explain their failure to record the assignment earlier. If the failure seems to have been deliberate, the Registrar may be less likely to agree to the extension. (See Reilly v Commissioner of Patents (1996) 36 IPR 314.)

After the design ceased

If the change of ownership occurred after the design ceased, we will not record the change until the design is restored. Until then, the extension application will proceed in the name of the previous owner (the owner according to our records) and the evidence to support the extension must relate to their error/omission or to circumstances beyond their control.