8.3. Examination and certification: Requesting examination

Any person, including a third party, can request an examination. The Registrar and the courts may also initiate an examination – however, this is very unusual. Examination can be requested more than once. The Registrar may examine a design that has at any time been a registered design. There is no limitation on this occurring only once (s 63).​​​​​​

However, in accordance with s 63(5), examination cannot proceed in the following circumstances:

i. The design has ceased for failing to be certified within period prescribed to complete an examination. Examination cannot continue either in respect of that examination request, or in respect of any other pending examination request.

ii. The design has been revoked – except if the revocation was the result of an ownership dispute, and a declaration has been issued under any of sections 52, 53 or 54.

Additionally, examination under the 2003 Act is not available to designs registered under the 1906 Act (s 151(3)(c)).

Where the term of the design has expired, or the design has ceased, there is a question about whether the examination serves any purpose. Section 71(4) provides a 6-year statutory limitation period for instituting court proceedings for infringement.

If a request for examination is filed more than 6 years after the cessation of the design, there is no purpose to be served by the examination – and examination will not occur unless the requestor indicates a real purpose for the examination occurring.

There is no provision that allows for examination of a design application. The Registrar will not entertain requests to examine design applications.

To have a design examined:

• The request must be submitted in accordance with the approved application form. Requesters should use a form that has been pre-approved by the Registrar, but other forms may be used as long as they contain the required information.
• The correct fee must be paid. The fee is due on the day of filing the request. If the fee is not paid, an ‘Invitation to pay’ will issue. The requestor will have 2 months to pay that fee.
• If the requestor is the design owner and the fee is not paid within 2 months, the design ceases (reg 11.04).
• If the requestor is a third party and the fee is not paid within 2 months, the request for examination is taken as not being filed (reg 11.06). A fee is also payable by the owner. The request and any accompanying material are forwarded to the owner. The owner has 2 months from the date of that notification to pay the fee (reg 11.05(1)). If the fee is not paid, the design ceases (s 48).

​​​​​​​The person requesting examination may include material in their application that relates to the newness and distinctiveness of the design (s 64(2)). If the request if filed by a third party, the material must be provided in duplicate (reg 5.01(b)), with the Registrar sending one copy to the owner.

Where the requestor only provides a single copy of that material, or if the copy of the material is of poor legibility, the Registrar may treat the request as not being in accordance with the approved form and return the documents to the requestor (reg 11.27(3)(a)).