- Home
- Introduction
- 1. Design rights
- 1.1. Design rights: overview
- 1.2. What a design right protects
- 1.3. Why protect a design?
- 1.4. How designs are protected in Australia?
- 2. Application for registration
- 2.1. Application for registration: overview
- 2.2. Registration process
- 2.3. Submitting an application
- 2.4. Minimum filing requirements
- 2.5. Who is entitled to be a registered owner?
- 2.6. Types of applications (s 22)
- 2.7. Request for registration
- 2.8. Further designs
- 3. Fees
- 3.1. Fees: overview
- 3.2. Application fees
- 3.3. Renewal fees
- 3.4. Examination fees
- 3.5. Hearing fees
- 3.6. Fees for extensions of time
- 3.7. Refunds
- Production test Designs
- 4. Formalities assessment
- 4.1. Formalities assessment: overview
- 4.2. The ‘Formalities check’ and ‘Formal requirements’
- 4.3. Formalities notices
- 5. Applicant details
- 5.1. Applicant name: overview
- 5.1.1. Is the applicant a person?
- 5.1.2. Individual (Australian and overseas, including joint owners)
- 5.1.3. Australian company (Pty Ltd, Ltd)
- 5.1.4. Strata company, owners corporation, body corporate etc
- 5.1.5. Government entity
- 5.1.6. Incorporated association
- 5.1.7. Overseas entity (AG, S.r.L etc)
- 5.1.8. Several applicant names, multiple designs
- 5.1.9. Joint owner names with ABN
- 5.1.10. Partnership
- 5.1.11. Trust/trustee
- 5.1.12. Business names and 'trading as'
- 5.1.13. Applicant name and design owner
- 5.2. Applicant address
- 6. Representations
- 6.1. Representations: overview
- 6.2. General requirements
- 6.3. Formal compliance
- 6.4. Product
- 6.5. Consistency
- 6.6. Text
- 6.7. Common designs
- 6.8. Drawings
- 6.9. Photographs
- 6.10. Specimens or 3D models
- 6.11. Different views
- 6.12. Environmental views
- 6.13 Pairs and mirror images
- 7. Classification
- 7.1. Classification: overview
- 7.2. Classification systems
- 7.3. Finding the right class
- 7.4. Cases of doubt
- 7.5. More than one possible classification
- 7.6. Multiple products or designs
- 8. Examination and certification
- 8.1. Examination and certification: overview
- 8.2. Examination and certification processes
- 8.3. Requesting examination
- 8.4. Third party initiated examinations
- 8.5. Concurrent requests for examination
- 8.6. Expedited examination
- 8.7. Material provided by a third party
- 8.8. Relevant material that must be considered
- 8.9. Time frame for completion of examination and last-minute responses
- 8.10. Withdrawal of request for examination
- 8.11. Notice of intention to certify
- 8.12. Requests for examination after certification
- 8.13. Further examination reports
- 8.14. Revocation
- 8.15. Examination hearings
- 8.16. Examination on Registrar's initiative
- 9. Identifying the design
- 9.1. Identifying the design: overview
- 9.2. Overall appearance
- 9.3. Visual features
- 9.4. Variable visual features
- 9.5. What cannot be a visual feature
- 10. Product
- 10.1. Product: overview
- 10.2. Identifying the product
- 10.3. Things that are not products
- 10.4. Things that are not different products
- 10.5. Product name
- 10.6. Manufactured or handmade
- 10.7. Component part of a complex product
- 10.8. Assembled set or kit
- 10.9. Indefinite dimensions
- 10.10. Examples - things that are / are not products
- 11. Excluded designs
- 11.1. Excluded designs: overview
- 11.2. Priority date of excluded designs
- 11.3. Checking the priority status of an excluded design
- 11.4. Designs that cannot be excluded
- 11.5. Registration/publication requests
- 12. Section 43 refusal to register
- 12.1. Section 43 refusal to register: overview
- 12.2. Medals
- 12.3. Anzac
- 12.4. Currency
- 12.5. Scandalous content
- 12.6. Arms, flags, emblems etc.
- 12.7. Olympic symbols
- 12.8. Integrated circuits
- 13. Assessing newness and distinctiveness
- 13.1. Assessing newness and distinctiveness: overview
- 13.2. Product name and intended use
- 13.3. Identifying the product
- 13.4. Test for newness
- 13.5. Test for distinctiveness
- 13.6. Substantially similar in overall impression
- 13.7. How the design is displayed
- 13.8. Other visual features
- 13.9. Searching
- 14. Section 19 requirements for distinctiveness
- 14.1. Section 19 requirements for distinctiveness: overview
- 14.2. Similarities and differences
- 14.3. State of development of the prior art base
- 14.4. Statement of newness and distinctiveness
- 14.5. Amount, quality and importance
- 14.6. Freedom of the creator of the design to innovate
- 14.7. Familiar person / Informed user
- 15. Statement of newness and distinctiveness
- 15.1. Statement of newness and distinctiveness: overview
- 15.2. Formalities assessment of the SoND
- 15.3. Amendments to the SoND
- 15.4. Using the SoND to assess distinctiveness
- 16. Standard of the familiar person / informed user
- 16.1. Standard of the familiar person / informed user: overview
- 16.2. Identifying the familiar person / informed user
- 16.3. Declarations about the familiar person / informed user
- 16.4. Familiarity with the product
- 16.5. References to European and UK decisions
- 16.6. Familiar person’s / informed user’s knowledge base versus prior art base
- 17. Prior art base
- 17.1. Prior art base: overview
- 17.2 Publicly used in Australia
- 17.3. Published in a document within or outside of Australia
- 17.4. Trade marks and patents as citations
- 17.5. Establishing the publication date
- 17.6. Designs disclosed in applications
- 18. Prior publication or use exceptions
- 18.1. Prior publication or use exceptions: overview
- 18.2. Exhibitions
- 18.3. Unauthorised disclosures
- 18.4. Disclosure to government
- 18.5. Copyright
- 18.6. Grace Period
- Annex A - An example of a grace period declaration
- 19. Priority date
- 19.1. Priority date: overview
- 19.2. Convention application
- 19.3. Multiple bases for priority
- 19.4. Plural designs
- 19.5. When priority must be asserted
- 19.6. Excluded designs
- 19.7. Converted applications
- 19.8. Applications by an entitled person
- 20. Convention priority
- 20.1. Convention priority: overview
- 20.2. Convention countries
- 20.3. Time limit to claim convention priority
- 20.4. Assessing convention priority claims
- 20.5. Convention priority for excluded designs and applications that include more than one design
- 20.6. Basic application
- 20.7. Requesting the basic application
- 20.8. Relevance of the basic application to examination
- 21. Satisfied
- 21.1. Satisfied: overview
- 21.2. Meaning of ‘satisfied’
- 21.3. ‘Satisfied’ as to prior art base
- 21.4. Reasonable doubt, balance of probabilities and uncertainty
- 21.5. ‘Not satisfied’
- 22. Amendments
- 22.1. Amendments: overview
- 22.2. Amending an application
- 22.3. Amending a registration
- 22.4. Inclusion of matter not in substance disclosed
- 22.5. Increasing the scope of the design registration
- 22.6. Other types of amendments
- 23. Extensions of time
- 23.1. Extensions of time: overview
- 23.2. Legal principles
- 23.3. Error or omission by the Registrar
- 23.4. Error or omission by the customer
- 23.5. Circumstances beyond the customer’s control
- 23.6. Registrar’s discretion
- 23.7. Protection for third parties
- 23.8. Period of extension
- 23.9. Extensions process
- 23.10. Advertisement
- 23.11. Request from an unrecorded new owner
- 23.12. Extension of the convention priority period
- 24. Assignments (and other interests)
- 24.1. Assignments and other interests: overview
- 24.2. Recording changes of ownership
- 24.3. Possible complications
- 24.4. Bankruptcy and winding up
- 24.5. Registering other interests
- 25. Ownership disputes
- 25.1. Ownership disputes: overview
- 25.2. Disputes between joint applicants
- 25.3. Disputes where a non-applicant claims ownership
- 25.4. Disputes where some designs have been registered or published
- 25.5. Disputes about recording a change of ownership before registration
- 25.6. Typical situations where ownership disputes arise
- 25.7. Revocation after an ownership dispute
- 26. Production of documents under s 61(1)
- 26.1. Production of documents under s 61(1): overview
- 26.2. Powers of the courts
- 26.3. Powers of the Registrar
- 26.4. Precedent
- 26.5. Who access is granted to
- 26.6. Access in ownership disputes
- 26.7. Where inspection can take place
- 26.8. Right of lien
- 26.9. Draft undertaking for access
- 27. Publication and file access
- 27.1. Publication and file access: overview
- 27.2. Designs not publicly available
- 27.3. Legal exceptions
- 27.4. Freedom of information
- 27.5. Prohibition orders
- 28. Hearings
- 28.1. Hearings: overview
- 28.2. Filing evidence
- 28.3. Disputes over whether the design was new and distinctive at the priority date
- 28.4. Interface with court proceedings
- 29. Glossary
- 30. Citation index
- 31. Keyword index
- 32. Classification listings
- Class Heading Summary
- Class 01 Foodstuffs
- Class 02 Articles of clothing and haberdashery
- Class 03 Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 Brushware
- Class 05 Textile piecegoods, artificial and natural sheet material
- Class 06 Furnishing
- Class 07 Household goods not elsewhere specified
- Class 08 Tools and hardware
- Class 09 Packages and containers for the transport or handling of goods
- Class 10 Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 Articles of adornment
- Class 12 Means of transport or hoisting
- Class 13 Equipment for production, distribution or transformation of energy
- Class 14 Recording, communication or information retrieval equipment
- Class 15 Machines not elsewhere specified
- Class 16 Photographic, cameras, cinematographic and optical apparatus
- Class 17 Musical instruments
- Class 18 Printing and office machinery
- Class 19 Stationery and office equipment, artists and teaching materials
- Class 20 Sales and advertising equipment, signs
- Class 21 Games, toys, tents and sporting goods
- Class 22 Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 Fluid distribution equipment, sanitary, heating, ventilation and air conditioning equipment, solid fuel
- Class 24 Medical and laboratory equipment
- Class 25 Building units and construction elements
- Class 26 Lighting apparatus
- Class 27 Tobacco and smokers supplies
- Class 28 Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 Devices and equipment against fire hazards, for accident prevention and rescue
- Class 30 Articles for the care and handling of animals
- Class 31 Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 Graphic symbols and logos, surface patterns, ornamentation
- 33. Designs (Formal Requirements for Designs Documents) Instrument 2022
23.2. Extensions of time: Legal principles
When deciding whether to grant an extension of time, the following principles apply.
Beneficial nature of s 137
Section 137 is a ‘beneficial’ provision. This means that its purpose is to rectify an error or omission – that is, to remedy the problem of not completing a relevant act in the prescribed period. It should therefore generally be applied in a way that will benefit the customer (see Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 480; Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 156) and is applicable unless there is some clear indication to the contrary (see Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; Danby Pty Ltd v Commissioner of Patents and Another (1988) 12 IPR 151).
This means that when examining a request for extension of time under s 137, the Registrar should give the benefit of the doubt to the customer, while also thinking about the consequences of granting the request and how that may affect others. See Registrar’s discretion.
Relevant time period
For s 137 to apply, there must be a relevant time period to extend. In particular, s 137 cannot normally be used to ‘extend’ the time for filing a design application where no earlier priority rights exist.
See Norman Stibbard v The Commissioner of Patents (1986) 7 IPR 337, where the AAT upheld the delegate’s decision to refuse an extension of time to lodge a patent application:
The Tribunal considers that, as expressed by Stephen J, as he then was, s 160(2) does not contemplate what amounts effectively to antedating the lodgment of a complete specification so as to effectively defeat the interests of other inventors who have lodged their specifications more promptly. If it were otherwise, the lonely inventor working away unaware of the inventive steps of others would suffer a rude shock if he promptly lodged his application and specification only to be defeated by a less prompt inventor applying under section 160(2) for an indulgence.
Justification for extension
For an extension to be granted, there must have been an error or omission or circumstances beyond the person’s control. The mere fact that an act was not done within a required time frame does not mean that an extension can be granted.
Note that if the Registrar believes that the conduct of the customer’s agent led to the error or omission, we should grant the extension on that basis even if the agent does not raise it or rely on it when seeking the extension (G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391).
Definition of ‘error or omission’
There is no clear or complete definition for the words ‘error or omission’. But there must be an error or omission as opposed to a deliberate decision. There is a difference between:
- errors or omissions that affect the ability of parties to carry out of their intentions
- the consequences of deliberate decision (Total Peripherals Pty Ltd v IBM & Commissioner of Patents (1998) AATA 784)
Example
The decision in Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 13 IPR 569 described ‘error or omission’ as follows:
It is in my opinion difficult to suppose that only the inadvertence and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word ‘error’ is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slip …
I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension. By no means every judgement by ‘the person concerned’ or by ‘his agent or attorney’ which can be shown to have been mistaken will answer the description ‘error or omission’ in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness of error.
The references here are to s 160 of the Patents Act 1952, which is equivalent to s 137 of the Designs Act 2003.
The decision in G S Technology Pty Limited v Commissioner of Patents (2004) 63 IPR 9 stated:
[65] Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application (and thus not have it lapse), and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.
[72] … assessing the conduct and state of mind of a person who is not a patent attorney against standards of what a competent attorney would have known, or would have done, to determine whether a discretion should be exercised, is wrong in principle.
[82] The observations of Jenkinson J in Kimberly-Clark specifically note that an extension can occur with or without moral fault on the part of the agent. Further, what his Honour in fact said was that it was necessary to have means to evaluate the applicant’s moral claim to an indulgence, so that if there has been an absence of full and frank exposure of the circumstances relevant to the failure to do the act or make the step occurred, the means to evaluate the applicant’s moral claim to an indulgence will be lacking.
Causal link
There must be a causal link between the reason given for extension (i.e. the error/omission or circumstances beyond control) and the failure to complete the relevant act within the time frame.
The error/omission or circumstances beyond control must have been the cause of the act not being completed within the time frame.
Generally, the customer needs to provide enough written evidence to satisfy the Registrar that their failure to meet a deadline for doing a relevant act was caused by any of the acceptable reasons for extension. The applicant for an extension must also demonstrate that they intended to complete the required act and that their or their agent’s error or omission caused the failure to meet the time requirement (see Kimberly-Clark at 579).
Burden of proof
The customer must provide the Registrar with sufficient material to justify the grant of an extension of time (except in the case of an error or omission by the Registrar). However, this does not amount to the customer having to satisfy a ‘burden of proof’. What is required is material sufficient to justify the administrative exercise of the relevant power (see Re Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 479).
Amended Reasons
Amended Reason | Date Amended |
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