23.8. Extensions of time: Period of extension

The general rule is that for extensions involving any of the acceptable reasons for extension, the customer is entitled to an extension period of the same amount of time they would have had if the error/omission/circumstances had not happened. This period is net of (excludes) administrative delays and the like – i.e. any delay on our part that would cut into the customer’s time to complete the action.

This rule applies to both:

• s 137(1) – Designs Office error or omission
• s 137(2) – customer error or omission or circumstances beyond control.

It is up to the customer to estimate how much extra time they need and to specify that time period in their application for extension. We then consider whether the length of extension they request is reasonable.

Customers should factor in the time it will take for:

• the Designs Office to consider the request, including advertisement if relevant
• both the customer and the Designs Office to then take the necessary steps to complete the relevant action.

For example, if the customer is 1½ months past a deadline and there are significant problems, they will need to request an extension of more than 2 months.

Extension to complete examination

When working out how much extra time to request to complete an examination, the customer must factor in enough time to allow for:

• the Designs Office to consider the application for extension
• the application for extension to be advertised if it is for more than 3 months (s 137(4))
• the 1-month opposition period for objecting to an advertised application for extension (reg 11.13(3))
• the Designs Office to grant the extension (if there is no successful objection)
• the owner to consider and respond to any adverse report from the examiner
• the examiner to consider that response.

Note: If there is an unsuccessful objection to the extension (s 137(5)), we treat the period between when the objection is filed and when we decide against it as a ‘circumstance beyond control’. We will add that period as a free extra extension of time (under s 137(2)(b)) if the delay caused by the opposition means that the requested extension is not long enough to complete the relevant actions. If so, we will add reasoning to the case file as to the delay being a circumstance beyond the control of the customer.

Renewing a design that has technically ceased

When the time limit for completion of examination runs out, the design automatically ceases – even if the owner has filed an application to extend that time limit. If we grant the extension, the design will be restored.

Meanwhile the time for renewing a design (s 47) can expire before we grant the extension to complete examination. In other words, the owner may need to renew it even though it has technically ceased.

In this case the owner needs to go ahead and request the renewal, not wait for the outcome of the extension application. They must assume that the design will be restored, not wait until it is restored.

See G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 (6 August 2003) and International Business Machines Corporation v Total Peripherals [2002] APO 44.

If the owner has already missed the renewal deadline before they apply for an extension to complete examination, they should apply to extend both time limits.

Extension to file evidence

A person can apply for an extension of time for more than 3 months. If the Registrar intends to grant the extension, the extension must be advertised (s 137(4)). In response to the advertisement, a person may oppose the granting of the extension if they believe it may have an adverse effect on their own design or business affairs. A formal opposition is handled by the oppositions and hearings section.

An intention to refuse to grant an extension of time of any length may also be challenged using the general right to be heard in relation to the Registrar’s discretionary powers (see Hearings).

Calculating when a time period ends

The basis for calculating the end of a period is primarily governed by s 36(1) and s 2G of the Acts Interpretation Act 1901 (Cth).

The basic rule for calculating the end date of a period in months is that the due date has the same day number. For example, one month from 5 March is 5 April. This takes into account both the definition of a month and period of 2 or more months in s 2G, and when the period may start, as outlined in the different scenarios in s 36(1).

Example

• The term of registration begins to operate the day after the date of filing (s 36(1), Item (5))
• The monthly periods are calculated to end immediately before the corresponding date of the next month
• Whilst an application may be filed on the first of January, and the term of registration begins to operate from the second, the registration period will end on the first of January (5 or 10 years later). The monthly periods are calculated to end immediately before the second of each following month.

If the start date is the last day of a month and there is no corresponding day number in the end month, the end day is the last day of that month – e.g. 2 months from 31 December is 28 (or 29) February.

Non-business days

If IP Australia’s office is closed for business on the end day, the action can be done on the next day when the office is open. This applies even if the action could be done online. The extra day’s grace is provided on the basis that if our office is closed there will be no option to discuss any issues with a staff member.

If the action is done online, the relevant point is whether IP Australia in Canberra is open for business on the end day.

For actions by the Registrar, the relevant point is the location of the Designs Office for persons exercising the Registrar’s powers. This is very important in relation to examination. If the end day for completion of examination is not a holiday in Canberra but is in another location, the owner cannot file a response the day after the holiday – i.e. the design will cease because of failure to complete examination.

Effect of an extension on subsequent time limits

An extension does not reset the original end date of the time frame for the purpose of calculating subsequent periods​​​​​​​

Example

A design application is filed on 22 December 2020 and registered on 8 February 2021. The initial 5-year registration period begins operating from the day after the filing date. The design is registered until 22 December 2025.

The owner forgets to renew the registered design within the prescribed time frame – i.e. by 22 December 2025. They apply for and receive a 2-month extension of time to complete the relevant act (renewal).

This does not mean that the second 5-year registration period extends by 2 months – i.e. to 5 years after the renewal fee was (eventually) paid. The end of the second registration period remains 22 December 2030.