22.2. Amendments: Amending an application

An applicant can request amendment of application details, including the representations and other accompanying documents, before registration (s 28, reg 3.09).

The amendment request must:​​​​​​​

• be in writing
• make it clear that the applicant wants to amend the application and set out what the proposed amendments are
• include a substitute document or representation containing the proposed amendments or a statement that specifies the proposed amendments and where each amendment occurs in the application (reg 3.09​​​​​​​).

Amendments may be made to details in the request form (for example designer name detail, detail of the applicant(s)) as well as details relating to the actual design (for example the product name and representation(s)).

There could be a number of reasons why the applicant requests an amendment. For example:

• change of applicant details​​​​​​​. Note however if the amendment would change the name of the applicant substantially and the rights of the design have not been assigned (s 30), the applicant must submit a statutory declaration and any other evidence to explain the relevant circumstances including any error(s) made, and why the name should be changed
• change in address​​​​​​​, including address for service
• to address deficiencies with the application so that it can proceed to registration. This may include excluding​​​​​​​ (removing) one or more designs that have been filed into a separate application
• to rectify an error in the representations, or in wording such as the product name​​​​​​​, or in the statement of newness and distinctiveness (SoND​​​​​​​).

The Registrar is not required to action such a request. The Registrar may decide to do so, taking into account whether the proposed request is allowable both under the amendment provisions and other provisions that are relevant to the proposed request, and whether the request is an appropriate course of action to take. Surrounding circumstances, including the impacts of amendment, may also be taken into account.

There are some constraints with a request made under s 28:

• Requests must not propose amendments to representations and other details that define a design in a way that would alter the scope of the application by including ‘matter which was not in substance disclosed’ in the original design application, representations or other documents.
• The 'representations' and other 'documents' mentioned in s 28(3) are taken to refer to representations and other documents which have been filed together and with regard to the same original design application.  
• Amendments to documents filed by other persons are not allowable. Whilst they are included as part of the case file, they are not documents of the ‘design application’ as set out in s 21. For example, documents filed under s 29 or s 69 by a third party.
• Amending a document such as the priority​​​​​​​ document, or a declaration made by the applicant, has the effect of voiding the authenticity of the document.

‘Voluntary’ requests to amend under s 28

The majority of requests to amend under s 28 will be for the purpose of correcting issues raised in a formalities notice​​​​​​​ under s 41​​​​​​​. However, s 28 is not limited to being in response to a notice – the applicant can also voluntarily request to amend their application. As the applicant will not always know exactly when their design will pass through the formalities assessment and be entered on to the Register, they should contact the Customer Service Centre to find out if they are still able to submit an amendment.

Dealing with an amendment

When handling an amendment request, IP Australia will check that the applicant has sent all required documents.​​​​​​​

Then we perform the following steps:

• We assess the amendment request to ensure that it is allowable.
• If the amendment request is in response to a formalities notice, we check the material to ensure that all issues have been addressed and fixed. If they have not, we send a further notice stating which issues have been fixed and which ones remain. There may be a need to explain an issue further.

If the application can be accepted for registration, we allow it to proceed. If the application cannot be registered, we issue another notice.