4.1. Formalities assessment: overview

​​​​​​​Key legislation in this topic: Designs Act: ss 13, 14, 21–23, 39-44; Designs Regulations: regs 4.04, 4.05, sch 2; Designs Formal Requirements Instrument

Key related topics: Registration process, Applicant details

The purpose of the formalities assessment is to ensure that a design application has the correct information to meet the legislative requirements for registration.

The role of the formalities officer is to check and assess the information the applicant has provided as part of their design application. This assessment is vital because:

• A valid registered design should be reasonably clear and succinct (Keller v LED Technologies Pty Ltd [2010] FCAFC 55 at 35)
• if we grant a registered right which does not meet the legislative requirements, and which is not reasonably clear and succinct this could result in difficulties for the owner in trying to obtain a certificate of examination (if requested) and enforce the right (if required)
• granting a registered right that does not meet legislative requirements defeats the purpose of the design rights system
• As part of conducting the assessment, the formalities officer also needs to think about the clarity of the application detail submitted. This includes what the design is and taking into account whether the registered design would be readily examinable in the future
• The registration details are made publicly available and they are of interest to the general public to determine their own legal interests.

The formalities officer must:

• check whether the applicant name is valid. The applicant must be a legal person and entitled to own the registered design
• check the accuracy of application particulars entered in the case file
• assess whether the applicant and designer details supplied are acceptable (i.e. designer name and applicant address details, including address for service and address for correspondence). This is different from assessing the validity of the applicant name (see above)
• complete the ‘formalities check’ as outlined in s 39 and reg 4.04 – single design application under s 22(1)(a) or (b), s 40 and reg 4.05; multiple design application under s 22(1)(c) or (d)
• for designs applications filed on or after 10 March 2022, check the application against the formal requirements – single design application under s 39(2)(aa) and multiple design application under s 40(2)(ca)
• for design applications filed before 10 March 2022, check the application against the formal requirements in Sch 2 of the Designs Regulations 2004
• make a classification determination
• check that the statement of newness and distinctiveness (SoND), if supplied, is relevant to the design in the application
• check that sufficient convention priority details have been included, if claimed​​​​​​​
• assess the application particulars to confirm that the number of designs included in the application matches the fee(s) paid
• consider whether the design should be refused under s 43 and reg 4.06. This includes whether the application detail (including the design itself) is, or might reasonably be taken to be, scandalous (see also reg 4.04(1)(aa)).​​​​​​​

If the application appears to be for a common design (s 22(1)(b)), the officer needs to assess whether the design is a common design in relation to each product listed in the application.

If the application passes the above checks, the design will be registered and advertised as such in the Australian Official Journal of Designs. At this stage all the information about the design that is in the application, including the representations, will be made publicly available on the Australian Design Search database (s 111 and reg 9.01).

If the application does not pass the above checks, the officer will issue a formalities notice to the applicant which will let them know the issues. The applicant will then have 2 months from the date of the notice to resolve the issues. If they do not resolve the issues within that time frame, the application will lapse.

If the applicant wishes to continue with an application that has lapsed, they will need to request an extension of time under s 137.

See Registration process for an overview showing where in the process of registration the formalities assessment is carried out.