23.3. Extensions of time: Error or omission by the Registrar

Section 137(1) applies if the Designs Office is responsible for an error or omission that results in the customer not taking the relevant action. It includes errors/omissions by the Registrar or Deputy Registrar, a Designs Office employee or a Designs Office service provider.

When we have clearly made an error or omission that caused the customer to miss a deadline, we must grant the requested extension.

Example

​​​​​​​A customer acted on the basis of information from an IP Australia’s electronic information system. At the time, the system contained incorrect data entered by a Designs Office employee. As a result of the incorrect data, their attorney missed the due date to file a response (to complete a relevant act).

Criteria for granting extension

A finding that there has been an error/omission is not in itself enough to require the grant of an extension of time. There must be a causal link between the error or omission and a relevant act that must be done within a certain time and, because of the error/omission,  either is not done or cannot be done within that time. The causal link requirement is indicated by the use of the word ‘because’ in s 137(1).

For example, a causal link between a Designs Office error or omission and a missed deadline exists where:

• the person sought advice from the Registrar
• in seeking that advice, they provided all relevant information (enough information for the Registrar to respond with advice)
• the advice from the Registrar was demonstrably wrong
• the customer acted on that wrong advice
• as a result, they did not take the relevant action within the required time.

For relevant case examples, see R Thomas & A Garnham v Jeijing Pty Ltd (1994) 29 IPR 441 and Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144; and Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals Inc v Amgen, Inc [1997] APO 69.

Conditions of extension

The customer receives an extension without paying the usual fee and usually without needing to provide a declaration. A declaration may be needed where the customer is required to outline the relevant facts that have resulted in the error or omission.

Unlike other allowable requests for extension, those based on s 137(1) generally cannot be opposed by third parties and therefore we do not advertise them – but see ‘Third-party objections’ below.

Third-party objections

We do not advertise extensions of time granted under s 137(1).

However, if there is a known third party whose interests may be adversely affected by granting the extension, the Registrar will first ask them whether they object. The scope for objection is limited to the question of whether there has been a relevant error or omission by the Registrar.

This situation is most likely to arise where a third party has requested examination. For example, see R Thomas & A Garnham v Jeijing Pty Ltd (1994) 29 IPR 441 and Jeijing Pty Ltd v Commissioner Of Patents & Ors (1995) AIPC 91-144.

​​​​​​​

Establishing what happened

If the staff member knows or can find out all the circumstances of the error or omission, it is generally inappropriate to require the customer to file a declaration. For example, if we have not actioned a fee payment, this can be established by enquiring within the Designs Office.

However, we may ask the customer to provide a declaration if we do not have access to the relevant facts.​​​​​​​​​​​​​​

Example

In the case outlined above, the data had been corrected by the time we received the application for extension, so we had no way to verify the attorney’s allegation. The problem was resolved by the attorney filing his own printout from the IP Australia system showing the incorrect data, along with an explanatory declaration.

Advance notice of errors or omissions

If we are aware of a Designs Office mistake that will result in the customer missing a deadline, we should not wait for them to request an extension.

For example, if a case file has gone missing and the time for completion of examination is about to run out, we should contact the owner, explain the situation and reassure them that we will extend the time limit for as long as the file was missing. If a third party requested the examination, we should advise them of this too.

Last-minute response

When the time for completion of examination runs out and the owner filed their response to an examination notice near the end of that time, it may be unclear who is responsible.

Generally if we receive the response in enough time for the examiner to properly consider it, it will be our mistake if the examiner does not do so within the deadline. If there is not enough time for the examiner to properly consider the response, the owner will likely need to apply for an extension of time under s 137(2) (customer error or omission) instead of s 137(1).

Examination notice delayed or not received

Section 137(1) may be applicable to extend the time for completion of examination where an examination notice was issued but not received – e.g. because we did not send it or sent it to the wrong address for service.

If it is clear that we did not send the examination notice, we will instead reissue the notice (rather than grant an extension). This will reset the time for completion of examination, which starts from the date of the notice. (Note that s 66(2) requires the Registrar to give a copy of each notice to the owner and that the time for completion of examination runs from the date of that notice.)

If the report was received but the customer misplaced it, s 137(2)(a) is the appropriate remedy.

If the notice was sent to the correct address but was delayed or not received (e.g. because of a postal delivery delay or error), s 137(2)(b) is the appropriate remedy. ​​​​​​​