chapter 11 - extension of time - s. 137 - ip australia...

D11 Extension of Time - s.137

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Chapter 11 - Extension of Time - s. 137



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Table Of Contents D11 Extension of Time - s.137 .............................................................................................. 5

D11 Extension of Time - s.137 .............................................................................................. 5

D11.1 Introduction ................................................................................................................. 7

D11.1.1 Calculating the expiration of a Time Period under the Designs Act ...................... 7

D11.2 s.137(1) - Error or Omission by the Registrar............................................................ 10

D11.2.1 General Considerations...................................................................................... 10

D11.2.2 Advertisement of section 137(1) ......................................................................... 12

D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner ........................ 12

D11.3 s.137(2) - Summary of the Principles of Law ............................................................ 13

D11.3.1 Beneficial Nature of Section 137 ........................................................................ 13

D11.3.2 Burden of Proof .................................................................................................. 13

D11.3.3 Nature of an Error or Omission ........................................................................... 13

D11.3.4 Error Must Be Causally Linked to Failure to do Relevant Act ............................. 14

D11.3.5 Balance of Factors Including Full and Frank Disclosure ..................................... 15

D11.3.6 Circumstances Beyond Control .......................................................................... 15

D11.4 Making the Application - s.137(2) ............................................................................. 17

D11.4.1 General Comments ............................................................................................ 17

D11.4.2 Person concerned: Change of ownership ........................................................... 17

D11.4.3 Extension of priority period – requesting Registration ......................................... 18

D11.4.4 Fees Payable ..................................................................................................... 18

D11.5 Registrar's Discretion - s.137(2) ................................................................................ 20

D11.5.1 General Comments ............................................................................................ 20

D11.5.2 Lack of Purpose ................................................................................................. 20

D11.5.3 Private and public interests ................................................................................ 20

D11.5.4 Functus Officio ................................................................................................... 21

D11.5.5 Delay .................................................................................................................. 21

D11.5.6 Protection Provisions ......................................................................................... 21

D11.6 Advertisement of Extension - Subsection 137(4) ...................................................... 22

D11.6.1 General Requirements ....................................................................................... 22



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D11.6.2 Directing Advertisement ..................................................................................... 22

D11.7 Period of Extension to be Granted ............................................................................ 24

D11.7.1 General Principles .............................................................................................. 24

D11.7.2 Extensions for Completion of Examination ......................................................... 24

D11.7.3 Renewal due before Design restored ................................................................. 24

D11.8 Common Deficiencies ............................................................................................... 26

D11.9 Protection and Compensation Arrangements ........................................................... 27

D11.9.1 Extensions granted under the Designs Act 2003 ................................................ 27

D11.9.2 Extensions granted under the Designs Act 1906 ................................................ 28



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D11 Extension of Time - s.137 1. D11.1 Introduction

2. D11.1.1 Calculating the expiration of a Time Period under the Designs Act

3. D11.2 s.137(1) - Error or Omission by the Registrar

4. D11.2.1 General Considerations

5. D11.2.2 Advertisement of section 223(1)

6. D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner

7. D11.3 s.137(2) - Summary of the Principles of Law

8. D11.3.1 Beneficial Nature of Section 137

9. D11.3.2 Burden of Proof

10. D11.3.3 Nature of an Error or Omission

11. D11.3.4 Error Must Be Causally Linked to Failure to do Relevant Act

12. D11.3.5 Balance of Factors Including Full and Frank Disclosure

13. D11.3.6 Circumstances Beyond Control

14. D11.4 Making the Application - s.137(2)

15. D11.4.1 General Comments

16. D11.4.2 Person concerned: Change of ownership

17. D11.4.3 Extension of priority period – requesting Registration

18. D11.4.4 Fees Payable

19. D11.5 Registrar's Discretion - s.137(2)

20. D11.5.1 General Comments

21. D11.5.2 Lack of Purpose

22. D11.5.3 Private and public interests

23. D11.5.4 Functus Officio

24. D11.5.5 Delay

25. D11.5.6 Protection Provisions

26. D11.6 Advertisement of Extension - Subsection 137(4)

27. D11.6.1 General Requirements



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28. D11.6.2 Directing Advertisement

29. D11.7 Period of Extension to be Granted

30. D11.7.1 General Principles

31. D11.7.2 Extensions for Completion of Examination

32. D11.7.3 Renewal due before Design restored

33. D11.8 Common Deficiencies

34. D11.9 Protection and Compensation Arrangements

35. D11.9.1 Extensions granted under the Designs Act 2003

36. D11.9.2 Extensions granted under the Designs Act 1906

D11.1 Introduction


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D11.1 Introduction The extensions of time provisions in the Designs Act 2003 are provided by section 137 and regulation 11.13. Section 137 is universally applicable. S.137 also applies to applications proceeding under the preserved provisions of the 1903 Act – see s.153(2).

The provisions of s.137 are essentially the same as s.223 of the Patents Act 1990, and s.224 of the Trade Marks Act. Accordingly the precedent under those Acts provides relevant precedent for corresponding provisions of s.137.

When considering precedent under the Trade Marks Act, regard must be had to the effect of the exclusions from an extension of time set out in regulations 21.28 of that Act.

The Act provides for the possibility of excluding an extension of time being granted for certain matters, by way of the definition of ‘relevant act’ at the end of s.137. Currently (2008) no actions have been prescribed for that purpose. Accordingly any time period set in the Act or Regulations for the doing of an act is capable of being extended.

D11.1.1 Calculating the expiration of a Time Period under the Designs Act

S.137 applies when an act required to be done within a certain time is not, or cannot be, done within that time. The ‘rules’ about how to calculate that period are as follows:

1. There must be a relevant period recognized in the Act that can be extended. Thus the time for filing a convention application is capable of being extended, but there is no relevant period for filing a first-instance application.

Note: An extension of time does not change the date on which the relevant action occurred. An extension of time merely extends a relevant period to the actual date of the relevant action, thereby maintaining the associated benefit.

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

36 Reckoning of time

(1) Where in an Act any period of time, dating from a given day, act, or event, is prescribed or allowed for any purpose, the time shall, unless the contrary intention appears, be reckoned exclusive of such day or of the day of such act or event.

Importantly, this does not reset the date of the period for the purpose of calculating subsequent periods.

3. The basic rule for calculating a period in months is that the due date is a date having the same day number. For example, one month from the ‘x’ of March is the ‘x’ of April. Where the start date is the last day of a month, there may be no corresponding day number in the future month. In this case the relevant day is the last day of the future month.

D11.1 Introduction


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When the start date is the last day of a month, the requirement that the period is exclusive of the given day is particularly relevant. The approach is:

• Add 1 to the starting date;

• identify the future date having the corresponding day number,

• subtract 1 day.

For example:

• 1 month from the 31 March is 30 April. [31 March + 1 day = 1 April. 1 April + 1 month = 1 May. 1 May less 1 day = 30 April].

• Similarly, 1 year from 29 February is 28 February. [29 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 28 February].

• Conversely, 1 year from 28 February in a non-leap year is 29 February in a leap year. [28 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 29 February].

[See the definition of Month in s.22 of the Acts Interpretation Act].

4. Where a period expires on a day where IP Australia (or any of its sub-offices) is not open for business, the calculation of the last day when the action can be done is governed by S.136A and Regulations 11.32 and 11.33 – and any declarations under s.136A(2)(b) [which are published in the AOJD]. S.36(2) of Acts Interpretation Act does not apply [s.136A(6)].

This provision has the following effects:

• If IP Australia is closed for business at all locations, the action can be done on the first subsequent day when IP Australia is open for business; and

• If IP Australia is closed for business at some (only) of its locations, the action can be done AT THAT LOCATION on the first subsequent day when IP Australia is open for business at that location. If the action is done on a subsequent day at a location which was open on the relevant day, the action will be out of time.

Note: If the action is done by electronic means, the critical consideration is whether IP Australia in Canberra was open for business on the relevant day. Where IP Australia in Canberra was open for business on that day but a State Office was closed, an action undertaken the next day at that State Office via electronic means (such as fax) does not obtain the benefit of the closure at that State Office, and will be out of time.

Where the relevant action to be done within the time period is an action by the Registrar, it is the location of the person exercising the Registrar’s powers that is relevant. This is very important in examination. When the final day for completion of examination falls on a day that is not a holiday in Canberra, the fact that it is a holiday in another location does not affect when the design ceases for failure to complete

D11.1 Introduction


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examination. That is, the owner cannot rely on the local public holiday to file a response the following day.

D11.2 s.137(1) - Error or Omission by the Registrar...


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D11.2.1 General Considerations

Extensions of time under this subsection arise because of an error or omission made by the Registrar or a Deputy Registrar; an employee of the Designs Office; or a person providing, or proposing to provide, services for the benefit of the Designs Office. Note the use of the word "must" – which means that once the existence of a relevant causative error or omission has been established, there is no discretion about whether an extension should be granted.

The duty statements for all employees of IP Australia include the duty to assist the Registrar of Designs to perform his or her function. Consequently all employees in IP Australia are an "employee of the Designs Office".

The granting of an extension of time under this provision entails an express admission that the Registrar has made an error or omission. Because such admissions may have other legal consequences, extensions of time under s.137(1) are not lightly granted. However where it is clear that the Registrar has made an error or omission, the existence of such other consequences is irrelevant to whether or not an extension should be granted.

The legislation does not require the applicant provide a declaration setting out the grounds on which the application is made. Indeed, usually the applicant will have no real knowledge of the relevant facts. However it is sometimes necessary that the applicant provide a declaration, because the Registrar is not aware of the relevant facts – for example, if a person misses a time limit pursuant to receiving misinformation from the Office.

Example: An Attorney acted on the basis of information obtained by querying IP Australia’s electronic information system. At the time this was done, incorrect data had been entered on the system by an Office employee; by the time the application for extension was received, that data had been corrected – so there was no way the delegate could verify the Attorney's allegation. The problem was resolved by the Attorney filing his own print out (including the incorrect data) annexed to an explanatory declaration. A similar solution would apply where oral information only is involved – although file notes on the case file might provide sufficient evidence to support the action without the need for the applicant to file a declaration.

A finding that there has been an error or omission is not in itself enough to require the grant of an extension of time. There must be a causal link between the error or omission and a relevant act that must be done within a certain time and which either is not done or cannot be done within that time. The causal link is described by the use of the word "because" in sub-section 137(1). Errors of a person which are claimed to be due to incorrect advice from the Registrar will generally fall under section 137(1) if the person:

• sought advice from the Registrar

• in seeking the advice, provided all relevant information, or provided sufficient information for the Registrar to realize that further information was required before providing the advice

• the advice given was demonstrably wrong



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• the applicant acted on that wrong advice, and

• as a result, a relevant act was not done within the required time.

See R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441, and the decision on review Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144.

In Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals Inc v Amgen, Inc [1997] APO 69 (19 December 1997), the potential opponent to a s.223 (patents) application sought copies of the material in support of that application from the Patent Office. That material was not provided until after the opposition period had expired. The potential opponent did not file an opposition until after it had received the material. The delegate, in allowing an extension under section 223(1)(Patents), held that the failure of the Commissioner to timely respond to the request for information was an omission that prevented Amgen from making any responsible decision as to whether they should file an opposition, and therefore prevented it from filing a notice of opposition. In doing so, the delegate stated:

"However it cannot be in the public interest, let alone the interests of either party, for there to be any expectation that an opponent must file an opposition in ignorance, where their ignorance of what is to be opposed is beyond their control. Thus in cases where an opponent is unable to ascertain from the Patent Office any material fact concerning that which might be opposed, I do not consider it reasonable (let alone desirable) to expect the opponent to file what must be (in such circumstances) a speculative opposition."

Where the necessity for an extension arises pursuant to the temporary loss of a case file or a fee payment within the Office, the circumstances surrounding the problem are entirely within the Office and within the knowledge of the delegate (perhaps after appropriate enquiry), and it is generally inappropriate to require the applicant to file a declaration.

Comment: Where a response has been received to an examination notice, the case file has gone missing, and the time for completion of examination is about to run out – the owner should be contacted, the situation explained, and the owner reassured that s.137(1) will be used to extend the time for completion of examination for a period equal to the period in which the file was not located. If a third party requested examination, they should similarly be advised.

Where a response to an examination notice is received very close to the end of the period for completion of examination, and the response is not considered before the time for completion has expired, the question may arise of whether the time for completion of examination should be extended under s.137(1). Generally speaking, if the response was filed with sufficient time for the examiner to properly consider the response and the examiner failed to attend to the response, s.137(1) will be enlivened.

Note: When a response is filed close to the date for completion the owner has some responsibility to ensure the examiner is aware that the response has been filed – such as by telephone contact, and/or faxing the response to the examiner. In particular, filing a response at a State Office of IP Australia on any of the last few days for completion of examination will unlikely give the examiner enough time to consider the response before the time for completion of examination has expired, and any extension of time would likely need to be dealt with under s.137(2)



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D11.2.2 Advertisement of section 137(1)

Extensions of time granted under section 137(1) must be advertised as allowed [regulation 11.13(4)]. Extensions under subsection 137(1) are not advertised for opposition purposes under s.137(4) as they do not involve an ‘application’ for an extension of time as in s.137(2).

However, in some cases there is a known third party whose interests may be adversely affected by granting the extension. In these cases, the Registrar will not proceed to grant such extensions until the Registrar has ascertained whether that party objects the extension [any such objection being limited to the question of whether there has been a relevant error or omission by the Registrar.]

Comment: This situation would most likely arise in examination proceedings, where a third party who has requested examination is clearly an interested third party. The hearing is limited to the issue of whether there is a relevant causative error or omission, since once that fact is established there is no discretion involved in the granting of the extension. For an example, see R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441, and the decision on review Jeijing Pty Ltd v Commissioner Of Patents & Ors. (1995) AIPC 91-144.

D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner

Section 137(1) may be applicable to extend the time for completion of examination where an examination notice was established but was not received e.g. because it wasn’t sent, or it was sent to the wrong address for service.

Where it is clear that the first examination notice was not dispatched (for instance, the report is in the case file), the appropriate remedy is to reissue the first notice rather than grant an extension under section 137(1) – and reset the time for completion of examination. [Note that section 66(2) requires the Registrar to give a copy of each notice to the owner, and the time for completion of examination runs from the date of that notice.]

Note: If the report was sent to the correct address but was delayed or not received (e.g. delayed or not delivered by post), subsection 137(2)(b) is the appropriate remedy. If the report was received but misplaced by the applicant, subsection 137(2)(a) is the appropriate remedy.

D11.3 s.137(2) - Summary of the Principles of Law


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D11.3.1 Beneficial Nature of Section 137

Section 137 is beneficial in nature and should be applied beneficially; (re 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). Section 137 is a general remedial section and has general application, applicable unless there is some clear indication to the contrary. (See Scaniainventor v Commissioner of Patents (1981) 36 ALR 101 and Danby Pty Ltd v Commissioner of Patents and Another 12 IPR 151).

However, there needs to be a relevant time period to extend. In particular, section 137 cannot normally be used to ‘extend’ the time for filing a design application where no earlier priority rights exist.

In Norman Stibbard v The Commissioner of Patents 7 IPR 337 the AAT upheld the delegate's decision to refuse an extension of time to lodge the {patent} application:

"The Tribunal considers that, as expressed by Stephen J, as he then was, s160(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."

D11.3.2 Burden of Proof

While the applicant has the burden of placing before the Registrar the circumstances which it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it should be so described; [Re Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 479]. What is required is material sufficient to justify the administrative exercise of the relevant power.

D11.3.3 Nature of an Error or Omission

For an extension to be granted, there must have been "an error or omission." Although there is no clear or complete meaning for the words "error or omission" a distinction should be drawn between:

• errors or omissions affecting the carrying out of the parties' intentions, and

• the consequences of deliberate decision: [Total Peripherals Pty Ltd v IBM & Commissioner of Patents, (1998) AATA 784 (30 September 1998)].



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The definition of an error or omission was expressed by Jenkinson J in Kimberly- Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569 in the following terms [the references are to s.160 of the Patents Act 1952, which is equivalent to s.137 of the Designs Act 1903].

"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."

This was further considered in G S Technology Pty Limited v Commissioner of Patents 63 IPR 9.

“[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.”

Note: If the Registrar has good reason to believe the error or omission has arisen from the conduct of the agent, the extension should be granted on that basis even if it is not raised or relied upon by the agent when prosecuting the s.137 request. G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391.

D11.3.4 Error Must Be Causally Linked to Failure to do Relevant Act



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There must be a causal connection between the error or omission and the relevant act that is required to be done within the stipulated time. In addition, the applicants for an extension must demonstrate that they had an intention to do the relevant required act, and that an error or omission on their, or their agent's behalf, reasonably could be said to have caused the failure to complete the relevant act in the time prescribed; (see Kimberly-Clark, supra at 579)

The mere fact that an act was not done is not itself a causative error. The causative error is the thing that resulted in the act not being done.

D11.3.5 Balance of Factors Including Full and Frank Disclosure

The balance of the relevant factors must favor the exercise of the discretion in favor of the applicant for an extension. The Registrar, in balancing these factors, is entitled to proceed on the basis that it is more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time; (Sanyo v Commissioner of Patents, supra, at 479). Relevant factors include whether an applicant for an extension has given a full and frank disclosure of all the surrounding circumstances that led to the error or omission, including a disclosure of the chain of causation (Kimberly-Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569). At page 583 Jenkinson J found that, in order to make out a proper case justifying an extension:

"an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."

Note: However, the Tribunal's discussion in Sanyo v Commissioner of Patents at 479 regarding the context in which Jenkinson J made these comments; and G S Technology Pty Limited v Commissioner of Patents 63 IPR 9 at [82].

D11.3.6 Circumstances Beyond Control

‘Circumstances beyond control’ is a force majeure provision. A force majeure is outside the control of the person concerned and something that could not have been avoided by that person's exercise of due care.

Delays by post and courier constitute the major source of these extensions. In some situations sickness or accident satisfy the requirement of this paragraph, e.g. if an applicant prosecuting his or her own case becomes seriously ill such that they cannot reasonably be expected to attend to their affairs at the relevant time, the probability is that he or she would be entitled to an extension. On the other hand, if a technical assistant to a firm of Attorneys missed a time limit owing to an illness, it would be expected that the firm would have made arrangements accordingly, in anticipation of this kind of occurrence. If not, it would appear



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that whereas error or omission might be involved, ‘circumstances beyond control’ would not be involved.

An action not done because of lack of funds is generally not a ‘circumstance beyond control’ (Vrubel v Upham 36 IPR 220). In particular, becoming bankrupt is not a circumstance beyond control within the meaning of s.137 (Reilly v Commissioner of Patents 36 IPR 314 at [49]). In this context it should be remembered that a sequestration order is made as the culmination of a sequence of events which the applicant could have avoided with the exercise of due care.

Anticipation of a Court judgement has been held to be a circumstance beyond a person's control (Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham 1995 AIPC 91-144 at paras 104 and 105).

The Courts consider that the applicant "stands in the shoes of his agent", to the extent that errors or omissions made by the agent (or by the agent's employees) are attributed also to the applicant. "Employee" here means a direct employee and not an intermediary such as a courier or a postal authority. Arguments that an error or omission by the agent were beyond the control of the applicant are to be rejected.

"circumstances beyond the control of the person concerned" has been interpreted in:

• Board of Control of Michigan Technological University v. Deputy Commissioner High Court - (1982) AIPC 90-005, Federal Court - (1981) 34 ALR 529

• Rohrmoster v. Registrar of Trade Marks 7 IPR 551;

• Abbott & Lamb Pty Ltd v. Registrar of Trade Marks (1991) AIPC 90-806;

• Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham 1995 AIPC 91-144;and

• Solar Mesh Pty Ltd v Commissioner of Patents (1995) AIPC 91-138.

It may be observed that often the motivation for arguing that the extension should proceed under s.137(2)(b) is the more favorable fee treatment compared to s.137(2)(a) – particular if the extension is for a long period of time. [See fee items 7 and 8.] This is particularly the case where the evidence clearly shows the existence of a relevant error or omission that would justify an extension under s.137(2)(a). However such considerations are per se irrelevant to whether an extension should be granted.

D11.4 Making the Application - s.137(2)


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D11.4.1 General Comments

Regulation 11.13(1)(b) requires that for the purposes of section 137(2) an application for extension must

• be in the approved form (form D/00/311 or equivalent)

• have with it a declaration setting out the grounds on which the application is made.

Situations may arise where it is not possible for the applicant to file the declaration with the application form. In such cases the declaration should be filed as soon as practicable thereafter. Delay in filing the declaration is a factor the Registrar needs to consider when exercising discretion on the application. In fact, given the provisions of reg 11.13(1), strictly the application is not made until such time as the declaration is filed.

Where a declaration is not filed with the application, the Registrar will allow 2 months for a party to file their declaration. If the declaration is not filed within this time, the matter will be set for hearing with a view to refuse the section 137 request. Any declaration received before the hearing will be considered as quickly as possible, with the hearing being cancelled if it is no longer necessary.

D11.4.2 Person concerned: Change of ownership

Usually, the applicant or owner of record makes the application under section 137. However, occasionally there is a change of owner of the design or application that has not been registered or recorded before the section 137 application is made. In such cases, processing of the section 137 application will be conditional upon the filing of a request to record the transfer of interest from the applicant or owner of record.

If ownership of the design changed before the design ceased (e.g. by an assignment dated before the ceasing date), the change of owner will generally need to be registered before the section 137 application is advertised for opposition purposes. In order to overcome the type of issues that arose in Reilly v Commissioner of Patents 36 IPR 314, the assignee will need to explain in their section 137 application any failure to record the assignment at an earlier date. Depending on the facts, a deliberate intention not to record an assignment may be prejudicial against a favorable exercise of discretion by the Registrar.

Reilly involved a situation of a bankrupt who failed to disclose his Patent to his trustee in bankruptcy (who would have been entitled to be recorded as the owner). There was also a deed of assignment (not signed by the assignee) purporting to assign the patent in the event of him becoming bankrupt.

In the case of an assignment that was made after the design ceased, the Registrar will record any change in title or interest on restoration of the design. Until that time the section 137 application will need to proceed in the name of the owner of record. In this case, the relevant error or omission is necessarily associated with the actions of the owner of record, and the evidence in support of the extension must be on that basis.



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In any of the above cases, the section 137 applicant will need to establish that an error or omission was made by the person concerned at the relevant time. In The University of Newcastle Research Associates Limited [2001] APO 64 (12 November 2001), the equitable owner took an assignment after the owner of record had made a deliberate decision not to proceed (with national phase entry). As a consequence, the equitable owner was unable to satisfy the requirements of section 137.

D11.4.3 Extension of priority period – requesting Registration

As a general principle, an extension of time is only granted for those matters for which an extension is sought. Furthermore, prior to the grant of the extension of time the applicant needs to act on any time limits that arise in the interim on the assumption that the extension will be granted.

A priority claims needs to be made at the time of filing [D06.1.3]. If the application is amended after filing to add a priority claim, an extension of time under s.137 will be required. Similarly, if the details of the priority claim are amended after filing, and that amendment has the effect of creating a new priority claim, an extension of time under s.137 will similarly be required. (A convenient test is whether the amendment of the priority claim is effectively the correction of an obvious mistake – see D12.4.2)

However the effect of any such extension on the requirement to request registration or publication within 6 months of the priority date [reg 4.01(2)] must be considered. In particular, if a request for registration or publication has not been filed, will the grant of an extension of time for making the priority claim result in the application lapsing through not having requested registration or publication? In such cases the applicant should file the request for registration or publication no later than the time of filing the request to extend the time to claim convention priority – with the extension request expressly referring to both the time period for filing the application, and the time period for requesting registration. If the applicant files the request for registration after filing the request to extend the priority period, a new error or omission is involved – and a separate extension of time will be required.

See also D11.7.3.

D11.4.4 Fees Payable

Fee items 7 and 8 of Schedule 4 of the regulations indicate the fees payable for extensions under sub-section 137(2). In all situations, the fee payable is determined by the length of the extension granted, not by the date on which the extension is granted.

Regulation 11.01(5) specifies that the fee is payable at the time of filing the request. Under regulation 11.06, if the section 137 fees have not being paid on filing then an ITP (invitation to pay) will issue. Failure to issue the notice within time will enliven the provisions of regulation 11.10. If the fee is not paid within 2 months, the request for an extension of time is deemed not filed [Reg 11.06(2)]



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If the applicant withdraws the request for an extension of time, fees paid for filing the s.137 request are generally not available for refund.

D11.5 Registrar's Discretion - s.137(2)


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D11.5.1 General Comments

Subsection 137(2) uses the word "may", and is therefore a discretionary power. That is, even though the terms of para (a) or (b) of subsection (2) may be satisfied, the Registrar is not obliged to grant an extension. There are a number of important factors to be considered here, including the purpose of the extension, the private interests, and the public interest.

The decisions of the courts concerning the approach to be taken to the exercise of discretion to extend time are well established; Sanyo v Commissioner of Patents 36 IPR 470 at 479. Importantly, the exercise of discretion cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem Pty Ltd v Commissioner of Patents 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213).

In New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [2001] APO 48 (21 September 2001), the delegate, in applying Sanyo, exercised the discretion under s.223 despite the lack of justification for the extension. The delegate considered that it is "more important to consider the consequences of extending or refusing to extend time than debate the reasons why the act was not done in time": per Davies J in Chalk v Commissioner for Superannuation (1994) 50 FCR 150, at 156, with whom Black CJ and Cooper J agreed. Similar comments are to be found in Comcare v A'Hearn (1993) 119 ALR 85, particularly at 88. Actions of the agent of a principal should not necessarily be regarded as being the actions of the principal: A'Hearn's case. A legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially: Davies J in Chalk's case at 155.

D11.5.2 Lack of Purpose

The granting of an extension is the granting of an indulgence, and an indulgence should not be granted that serves no useful purpose. For example, where it is manifestly clear that it would not be possible to issue a certificate of examination under the terms of the Act, an extension of time should not be granted to extend the time for completion of examination. Another example is matters in which the Registrar has become functus officio (see D11.5.4 Functus Officio).

D11.5.3 Private and public interests

In exercising discretion, it is appropriate to have regard to the public and private interests. This is a particular issue where it is clear that there is a third party interested in the design – such as a third party who has requested examination, and the owner is seeking an extension of the time for completion of examination. In situations where the request under s.137 is not to be advertised under s.137(4), it may be appropriate for the Registrar to invite that third party to comment on the extension, and for that party to be heard as a matter of choice,



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pursuant to the requirements of reg 11.22(1). The public interest can best be related to the question of "delay" (see D11.5.5 Delay).

D11.5.4 Functus Officio

As a general rule, administrative decision-makers cannot re-make a final decision unless the relevant legislation permits them to do so. The decision-maker, having made a final decision in the exercise of a statutory power, is said to be functus officio with respect to that power. In this regard, the Designs Act does not make provision (either express or implied) for the Registrar to withdraw the registration of a design, or a certification of examination.

However, in some circumstances the purported decision in relation to registration or certification may have no legal effect, and so can be treated as if it had not been made at all. An administrative decision that involves jurisdictional error is a decision that lacks legal foundation and so is properly 'regarded, in law, as no decision at all'. See the High Court decision Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 187 ALR 117.

In British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1566, an application for an extension of time to file an opposition was filed late on the day before registration of the trade mark occurred. Registration occurred early the next day, before the application came to the attention of the relevant staff. The Federal Court held that the Registrar was not empowered to register the trade mark without first considering the application for extension of time.

D11.5.5 Delay

Inordinate delay in filing an application for an extension of time, or in filing available relevant material in support, is potentially detrimental to the public interest. Consequently it is expected that where such a delay has occurred an explanation in declaratory form will be provided. In any event, the Registrar will need to be satisfied that any further or unnecessary delay which has hampered having the matter dealt with at the earliest possible date was not caused to any significant extent by the actions of the applicant for the extension of time (Sanyo v Commissioner of Patents 36 IPR 470). It should be remembered that because of the provisions of reg 11.13(1), strictly the application is not made until such time as the declaration is filed.

D11.5.6 Protection Provisions

The provisions of section 139 provide for the protection of parties who took definite steps to use a design commercially after registration of the design had ceased. It is a relevant consideration when exercising the discretion under section 137 that anyone who has made commercial use of the design is protected under these provisions. (Sanyo v Commissioner of Patents 36 IPR 470).

D11.6 Advertisement of Extension - Subsection 137(4)


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D11.6.1 General Requirements

Where an application is made for an extension of time for more than 3 months, it is mandatory to advertise the extension – s.137(4). In response to the advertisement, a person may oppose the granting of the extension, as provided in sec 137(5).

The requirement to advertise is mandatory where the total extension sought is based on a single set of grounds under para (2)(a) or (2)(b). For example, suppose extension is required for the purpose of completion of examination. Initially, a period of 3 months only is applied for, because this period was perceived as adequate, even though the circumstances under para (2)(a)/(2)(b) justified a much longer extension. If it is then found that the 3 months is inadequate, the applicant would be entitled to the grant of a further period. However, as soon as the total period exceeded 3 months, s.137(4) has effect, and the total extension must be advertised. Note that the decision to advertise is not based on the fact that the total period sought for a single purpose (here, completion of examination) exceeds 3 months, but that the total extension based on a particular set of grounds exceeds 3 months. That is, it would be legitimate to grant an extension (unadvertised) for completion of examination, of a 3 month period, based on grounds under para (2)(a), and to subsequently grant a further 3 months extension period for acceptance, based on grounds under para (2)(b), or even different grounds under para (2)(a)

The advertisement requirement of sec 137(4) arises in respect of "an application for an extension…" and thus only extends to situations involving an extension of time sought under sec 137(2).

Upon granting an extension of time, a notice of such grant must be published (see reg 11.13(4).

D11.6.2 Directing Advertisement

Requests for an extension of time are not automatically advertised under s.137(4). Rather the Registrar will give consideration to the request to the point of being satisfied that grounds for the extension have been established so that, in the absence of any opposition being filed to the extension application, the extension could be granted. When the Registrar is prima facie satisfied that an extension could be granted, she will direct advertisement under s.137(4).

As to the degree of satisfaction needed, this will require the existence of at least "some evidence on which the {Registrar} could decide to grant the extension of time" even though



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there is other evidence on which the application could be refused. See Kimberly-Clark Corp v Proctor & Gamble Co, (1992) AIPC 90-869.

In the event that the Registrar fails to be prima facie satisfied that an extension is justified, the Registrar will usually request the applicant to file further material in support of the request.

If the Registrar forms the view that an extension could not be granted, she may proceed to refuse the request under s.137(6) – without advertisement under s.137(4).

If the Registrar does not advertise the application, the application cannot be opposed and the Registrar must refuse to grant the application. This provision saves third parties from going to the expense of filing an opposition to the grant of an application that the Registrar does not intend to grant.

Note: If following the hearing the Registrar is not satisfied that the extension should be refused, the application will be advertised as usual under s.137(4). Note that any decision to advertise under s.134(4) cannot pre-empt the Registrar’s decision in any opposition that might be filed – and will therefore be of very limited scope.

D11.7 Period of Extension to be Granted


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D11.7.1 General Principles

The length of the period granted as an extension is to be determined from the circumstances of the action which led to the necessity for an extension. Needless to say, this period may not necessarily coincide with the period actually applied for.

The general rule is:

where error or omission, or circumstances beyond control are involved, the applicant for the extension is entitled to an extension period - net of administrative delays and the like - which equates to the period which would have been available had the error, omission etc. not occurred.

This rule applies equally to sec 137(1) as it does to sec 137(2). If this period is inadequate to meet the purpose of an extension under sec 137(2), the applicant has not, on the face of the application, justified the extension.

D11.7.2 Extensions for Completion of Examination

Most extension of time requests will relate to matters where the end of the period to be extended is known at the time the request is filed. However when an extension of time for the completion of examination is sought, the completion of the examination will not occur until after the extension has been granted, and then only after the examiner has considered the application. Additionally, if the examiner issues an adverse report there will be further time required for that report to be considered by the owner, a response filed, and the examiner consider that response.

Accordingly, when applying for an extension of time to complete examination the applicant will need to request an extension of time sufficient to allow for these actions to occur. Additionally, if the extension is for a period in excess of 3 months, an additional period needs to be included to cover the times associated with advertising the request under s.137(4), the one-month opposition period under reg 11.13(3), and the subsequent period to grant the extension. Usually an additional two months is sufficient for this purpose.

Note: If the extension is opposed under s.137(5) and is subsequently granted, the Registrar will deal with the period between the filing of the opposition and the conclusion of that opposition as being a ‘circumstance beyond control’.

D11.7.3 Renewal due before Design restored

Where:

• a design has ceased through failure to complete examination; and



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• an extension of time is filed for the purposes of completing examination

it can happen that the time for renewing the design (s.47) expires in the period after the request for an extension of time has been filed, but before the extension of time is granted.

In such circumstances, the owner might be reluctant to seek renewal of the design until the outcome of the extension of time application is known. However the period for renewal is set by reference to the filing date, and is not conditioned on whether or not the design is ceased. Consequently the owner will need to ensure that renewal is timely requested on an assumption that the Design will be restored – and not wait until it is restored. Failure to do this would be a new `error or omission' not covered by the section 137 request under consideration.

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 at the time the extension of time has been filed both the time for completing examination, and requesting renewal of the design, have expired, the extension of time request should seek an extension of both time limits.

See also D11.4.3.

D11.8 Common Deficiencies


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D11.8 Common Deficiencies Common deficiencies that occur in applications for an extension of time under section 137 are:

• the request is for the incorrect period

• the request is in respect of the incorrect action - particularly in respect of filing an application covering excluded designs

• the request is in respect of a matter that cannot be extended (e.g. requests to file a first-instance application)

• the declaration is of low evidentiary value by relying upon hearsay ("I declare that the [foreign] associate has told me that his client has told him that….) - particularly in situations where there is no apparent reason (other than mere inconvenience) why the person having the direct knowledge of the circumstances cannot provide a declaration. This is to be contrasted with the situation where "person X, formerly of our employ" committed an error, where hearsay evidence may be quite appropriate.

• declarations that apparently provide 'selective' extracts of supporting documents whilst avoiding documents that may be less favorable to their case. (As a particular subset of this situation - declarations which refer or allude to documents as supporting their case, but fail to provide copies of them.)

• The request does not refer to all matters that need to be dealt with consequential on the request being granted – such as the time for requesting registration (for extensions of the priority period), and potentially the time for requesting an extension of term (for extensions of the time for completing examination).

D11.9 Protection and Compensation Arrangements


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D11.9 Protection and Compensation Arrangements Where a design ceases, there is a general public-interest expectation that the design has moved into the public domain and is available for all to freely use.

The primary effect of restoring a design is to re-establish the monopoly rights of the owner. However this is to the detriment to anyone who has taken definite steps to commercially use the design after the design had ceased. The detriment is not limited just to infringing products that a person might have sold or made – it also includes the cost of (for example) plant and equipment needed to manufacture the product, even if no product had been manufactured by the time of restoration.

Both the Designs Act 2003 and Designs Act 1906 include a mechanism to protect the interests of a person who has taken definite steps to commercially use a design after it had ceased. Conceptually, the protection is achieved by making the restoration of a Design something less than a full and complete restoration of all the owner’s rights. In particular, where a third party has taken definite steps to commercially use a design after it had ceased, that party accrues rights to use the design which are not lost to the design owner upon restoration.

It is important to recognize that the detriment to third parties arises from the mere fact of restoration. It is not dependent upon the reasons justifying the extension (including whether the restoration was indeed properly justified), nor upon whether the third party opposed the restoration or was successful in any such opposition - see Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3, at para 43.

The Designs Act 1906 provided an extension mechanism in S.27B that mirrored s.160 of the Patents Act 1952. [This arose from the Franki report (1973), which considered the prior practice of using regulation 51 to grant an extension to be unsatisfactory.] The mechanism included a protection and compensation provision by way of the grant of a licence upon application by the third party to the Registrar – with the design owner being able to oppose the grant of that license.

The Designs Act 2003 provides (in effect) a statutory licence requiring no application or other consideration before the Registrar. Any dispute about entitlement to the licence will likely only be dealt with in the context of infringement proceedings.

An entitlement to a licence (under either Act) is necessarily based on evidence. A third party being aware that a design has ceased should ensure there is an evidentiary basis supporting their entitlement to a licence in the event of the design being restored. While relevant evidence ought to be easy to gather at the relevant time, Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3 involved a situation where the evidence to support the licence was manifestly deficient.

D11.9.1 Extensions granted under the Designs Act 2003

Under the Designs Act 2003 the following issues arise:

• S.139 of the Designs Act 2003 applies to any extension granted under s.137 of the Act – even if the design was filed or registered under the 1906 Act.



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• The protection and compensation provisions apply if a design ceases to be in force because of a failure to do a relevant act – and is subsequently restored under s.138. They are not enabled as a result of an extension that is granted for a purpose that does not involve restoration of the design (for example, the period for filing a priority document – Reg 3.06(3));

• There is no minimum period of extension before the protection and compensation provisions apply – an extension of a single day is (in principle) sufficient to enliven the protection and compensation provision.

This is in distinction to the regime in the Designs Act 1906, where the extension had to be for a period in excess of 3 months.

• There is no express causative relationship between using the design commercially and knowledge of the fact that the design had ceased.

There is a question of whether a court would allow a person who has been infringing the design to rely upon their continued ‘infringement’ after the design had ceased as a basis to gain protection under s.139.

D11.9.2 Extensions granted under the Designs Act 1906

• S.27B(7) of the Designs Act 1906, and regulations 29, 29A and 29B of the former regulations continue to apply with respect to any extension that was granted under s.27B of the 1906 Act – see regulation 12.04(2). [Note: the Registrar considers regulation 12.04(2) maintains the operation of the former provision in a manner enabling the making of a new application for a licence. In this regard, see Ford Motor Company of Australia Ltd v Stephen Campbell of All Crash Parts Pty Ltd [2006] ADO 1, and Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3.]

• The extension must have been for a period in excess of 3 months in order for the protection and compensation provisions to be enabled.

• The license applicant must show a causative relationship between their availing themselves of the design, and knowledge of the fact that the designs had ceased. Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3.

• A request for a licence must be filed. There is no time limit for filling an application for a licence. The design owner has the right to oppose the application.

• If a licence is granted, the Registrar is responsible for setting the terms of that licence.

Relevant precedent for the grant of a licence by the registrar are:

• Harrison v Theo [1998] ADO 2 - license granted

• Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3 – license refused



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A decision of relevance under the Patents Act 1990 (referred to in Harrison v Theo) is:

• HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12; 38 IPR 121 – license granted.

chapter 11 - extension of time - s. 137 - ip australia...

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