8.13. Examination and certification: Reports

If the examiner has a reasonable belief that a ground for revocation exists, we must notify the owner of the registered design (reg 5.03​​​​​​​(2), s 66​​​​​​​(2)).

This follows administrative law principles which seeks to ensure decisions are transparent, accessible, correct, and accountable. We need to communicate our decisions clearly as part of ensuring procedural fairness.

After a first report is issued, the owner can respond in writing contesting the decision or requesting an amendment of the Register (that would overcome the ground for revocation).

If a written response to a first report is received, the examiner must reconsider the ground for revocation considering the submissions.

If the submissions are not persuasive, the examiner must respond including a statement to this effect. A statement that any proposed amendment would not allow the ground for revocation to be removed is also required, if applicable. See reg 5.03(7).

First examination report

A first report needs to include reasoning that supports the decision made. This reasoning needs to be communicated in a way that it can be understood by the reader and offers a clear message as to how the examiner came to the decision. First reports need to include helpful information and options, to assist the owner with what their next step might be. Options should be expressed in a way that the reader can understand.

Reasoning that speaks to the s 19 assessment should be included where the ground for revocation is based on distinctiveness. The report should highlight the similarity between the designs, which has contributed to the ground for revocation raised.

Further examination reports

After the examination report has been completed and sent, we may need to send a further report if the owner:

• contests, in writing, the ground for revocation
• files amendments.

If the owner files amendments, the examiner considers whether the amendments are allowable (reg 5.05(1), s 66(6)).

At the start of the further report, the examiner will include any adverse findings (reg 5.05(2)), including any direction to file a substitute document or representation. Further examination reports should always show the amendments that have been filed and a statement to the effect that those amendments have been considered.

The amendments are allowable

If the amendments are allowable under both reg 5.05(1) and s 66(6), the examiner will continue the examination as if those amendments had been made.

The amendments are allowable under s 66(6) but not under reg 5.05(1)

The examination will continue as if those amendments had been made. Regulation 5.05(1) contains formality requirements. It can be assumed that the owner can (and will) readily overcome those deficiencies and the examination can proceed as if the amendments had been made.

However, in the further report the examiner must note that the owner must rectify the deficiencies under reg 5.05(1) that have been identified, otherwise the grounds for revocation will still exist.

The amendments are not allowable under s 66(6)

If the amendment does not meet the requirements of s 66(6), in the further report the examiner will indicate:

• the grounds for revocation that will exist if the amendment is allowed (including, if no grounds for revocation would exist, an express statement to that effect)
• the grounds for revocation that exist without the amendment (including, if no grounds for revocation would exist, an express statement to that effect).

Where an amendment does not comply with s 66(6), the applicant can either:

• argue that the amendment does comply with s 66(6)
• propose different amendments.

Therefore it is important to indicate the grounds for revocation both with and without the amendments. The amount of detail that should be provided for each of the scenarios will depend on the factual circumstances.

​​​​​​​The Registrar must reconsider whether there is a ground for revocation having regard to the arguments provided by the owner, and on the assumption that the proposed amendments have been made.