8.2. Examination and certification: Examination and certification processes

Date Published 07 Apr 2022

Standard process

To certify a design, we must receive a request to have the design examined. The request is often from the owner of the design but it does not need to be. A third party, such as a competitor, can apply to have a design examined (see Third party examination process below).
A court can order the Registrar to examine a design, or the Registrar may decide, on their own initiative, to examine a design. However, these cases are very rare.
The examiner will examine the design to see whether the design is a registrable design (i.e. new and distinctive (s 15)) and whether any grounds for revocation exist (s 43, reg 5.02, s 65(2)(b)).
If the design is registrable, the examiner issues a certificate of examination and the design is certified.
If the examiner finds any grounds for revocation, the applicant has an opportunity to address them within 6 months. Typically the registered design ceases if the examination has not been completed within 6 months and there are no extensions of time.
If the matter escalates to a hearing and the Hearing Officer is satisfied that a ground for revocation exists, the registration is revoked.

Third party initiated examination process

The Customer Experience Group is responsible for the pre-examination process.

The examination request is fast tracked.
The examiner carries out an examination in the usual way. During the examination they will consider any material that the third party may have submitted under s 69.
If the examiner finds grounds for revocation, we issue an adverse report to the design owner in the usual way. This is also provided to the third party along with a covering letter (reg 5.03(8)).
When the examiner receives a response from the registered owner but the response does not resolve the grounds for revocation, we issue a further adverse report in the normal way. This is also provided to the third party along with a covering letter (reg 5.03(8)).
The third party can also submit a response. The examiner can consider the response but cannot reply to it directly. The examiner may refer to information from the third party response in any further adverse report. As part of that further adverse report, we must include a copy of the third party response.
If the examiner finds no grounds for revocation, they will issue a report in the usual way. Both parties are notified that we intend to issue a certificate of examination.
The notification will state:
1. that the design has been examined (s 67(2)(a))
2. if the clear report is conditional on amendments being made, the details of the proposed amendments (s 67(2)(b))
3. that a certificate of examination is to be issued (s 67(2)(c))
4. that the parties have an opportunity to be heard before a final decision is made (s 67(3))
5. a deadline for requesting a hearing.
If none of the parties request a hearing before the deadline, the examiner will certify the registration.
If the third party requests a hearing before the deadline, this request is processed first by the Designs Administration team and then by the Oppositions and Hearings team.
If the third party submits further argument or material under s 69 and the examination period is not over, the examiner will consider whether to issue a first or further adverse report (as appropriate).
Otherwise, if the deadline to request a hearing has passed, the examiner certifies the registration as normal.
The examiner will also need to provide a ‘statement of reasons’ along with the notification. The statement of reasons is particularly important if the file contains material submitted under s 69 (including submissions or information from the third party).

Amended Reasons

Amended Reason	Date Amended
	07 Apr 2022