Amending a Design Application – Scope and Limitations

When you file a design application in Australia, accuracy is critical. From the applicant’s details to the product name and design representations, every element shapes the scope of your rights. But mistakes happen. Information might be entered incorrectly, business details may change, or you may realize a representation does not truly capture the design.

Amending a Design Application Before Registration

Under section 28 of the Designs Act and regulation 3.09, applicants can request amendments to their design application before registration. These amendments may relate to both administrative details (such as the applicant’s name) and substantive design information (such as the product name or representations).

Requirements for an Amendment Request

For an amendment to be considered during the design registration process, the applicant must clearly express their intention to amend the application and specify the exact nature of the proposed changes. This request should be accompanied either by a substitute document or representation that reflects the amendments, or by a statement that identifies the changes and pinpoints their location within the original application. Vague or incomplete descriptions are insufficient, i.e. any proposed modification must be thoroughly explained and properly documented to be accepted.

Amendments prior to registration can address a wide range of issues. These include corrections to applicant details, such as fixing errors in the applicant’s name, updating contact information, or changing the address for service. Ownership details may also be amended, particularly when the applicant’s name requires substantial correction and no formal assignment has occurred. In such cases, a statutory declaration and supporting evidence must be provided to justify the change.

Design-specific amendments are also common, such as rectifying mistakes in product names, visual representations, or the Statement of Newness and Distinctiveness. Additionally, procedural adjustments may be necessary, for example, separating multiple designs that were originally filed together into distinct applications.

The underlying reasons for seeking amendments often stem from clerical errors, shifts in business strategy, or the need to comply with formalities notices issued by IP Australia. Regardless of the motivation, the amendment process demands clarity, precision, and supporting documentation to ensure the integrity of the application is maintained.

Registrar’s Discretion

The Registrar is not required to approve amendment requests, even if they are properly submitted. Each request is subject to discretionary review, and approval is not guaranteed. The Registrar will assess whether the proposed amendment is permissible under section 28 and any other applicable provisions of the legislation.

Beyond legal compliance, the Registrar will also evaluate whether the amendment is appropriate given the specific context and circumstances surrounding the application. This includes considering the nature of the change, its timing, and any procedural or substantive implications.

Another key factor in the decision-making process is the potential impact of the amendment on the scope of the application and on third parties. Changes that significantly alter the design or affect others with a legal interest in the application may be scrutinized more closely.

Therefore, applicants should not assume that any amendment they propose will be automatically accepted. Each request must be carefully justified, clearly documented, and mindful of its broader implications.

Limitations on Amendments

The ability to amend under section 28 is limited by some strict boundaries:

• No new matter, i.e. you cannot introduce “matter which was not in substance disclosed” in the original application. For example, you cannot expand your design to cover features that were not shown in the original representations.
• Same application only, i.e. amendments must relate to representations and documents filed with the same original design application. You cannot amend it by referencing documents from a different application.
• Exclusion of third-party documents, i.e. documents filed by others (for example, under sections 29 or section 69) are not part of your application and cannot be amended.
• Authenticity concerns, i.e. amending priority documents or statutory declarations can undermine their authenticity, so such amendments are not allowed.

Voluntary Amendments

Most amendment requests arise in response to formalities notice issued by IP Australia under section 41. However, section 28 also allows voluntary amendments. Applicants can request changes at any time before registration, even if no notice has been issued.

This is because you may not always know when your application will be processed, it is best to check with IP Australia’s Customer Service Centre to confirm whether an amendment can still be submitted. Timing is key here, i.e. once the design is registered, section 28 amendments are no longer available.

Amending a Design after Registration

Once a design has been registered, the pathway for amendment is much narrower. Amendments during the course of examination are dealt with under section 66 of the Designs Act.

Section 66 applies where the Registrar has identified a ground for revocation, such as the design is not a registrable design (sec 65(2)(a)); or perhaps the design should not have been registered because of section 43 (for example, it is not new or distinctive).

In these cases, the Registrar may allow the owner to amend the registration to remove the problem.

Owner-Initiated Amendments

Owners can also propose amendments voluntarily during examination if they believe their registration has a revocation risk, even if the Registrar has not raised the issue. In these cases, the Registrar assumes a ground for revocation exists and assesses the amendment against section 66 requirements.

That said, the Registrar will either accept or reject the entire amendment request, partial acceptance is not possible.

Concept of “In Substance Disclosed”

Both sections 28 and section 66 hinge on whether proposed amendments introduce matter “not in substance disclosed” in the original filing.

This phrase has been interpreted in case law to mean that while explicit disclosure is required, implied disclosure can sometimes suffice. The key test is whether a person familiar with the product would consider the feature to have been disclosed in the original representations.

For example, changing solid lines to broken lines (to downplay certain features) may be allowed, because those features were already visible. However, adding new components (such as a milk frother to a coffee machine design) would not be allowed, because that feature was not in substance disclosed.

Amendments that increase scope

Another important limitation is that amendments cannot increase the scope of the design registration. This is tested by asking, i.e. would the amendment make something an infringement that was not an infringement before?

If the answer is yes, the amendment is not allowable.

The proposed amendment, which introduces a pineapple-shaped handle to the design shown on the left, cannot be accepted because it would significantly expand the scope of the original registration depicted on the right. The original design does not include this distinctive feature and incorporating it through amendment would alter the overall impression of the design in a way that exceeds what was initially protected.

Such a change would mean that other cup designs featuring a pineapple handle, i.e. whether identical or substantially similar, could now fall within the scope of the amended registration and be considered infringing. This would not have been the case under the original design, which did not encompass that element. Because the amendment would effectively extend the legal boundaries of the design to cover new visual features, it goes beyond what is permissible and cannot be actioned. Amendments must clarify or correct existing content, not introduce new elements that broaden the design’s reach.

Other Amendments to the Register

Apart from amendments to applications and registrations, the Designs Act and regulations also allow for limited corrections to the Register itself, such as-

• Correcting clerical errors or obvious mistakes (reg 9.05).
• Updating names or addresses.
• Recording assignments of ownership (sec 114, reg 9.03).
• Adding designers in some circumstances.
• Recording revocations or court-ordered rectifications.

These amendments are generally administrative and must not affect the scope or validity of the design itself.

Work with us

Amendments can be a useful tool for correcting errors and ensuring your design application or registration reflects the reality of your product. However, they are not a back door for broadening rights or adding new matter after the fact. The law deliberately restricts amendments to prevent applicants from unfairly expanding their monopoly beyond what was originally disclosed.

If you do need to amend a design application, it’s best to seek professional guidance to ensure your request meets the requirements and has the best chance of being accepted. Contact us now for a free consultation.