Extension of Time in Australian Design Registrations

Deadlines are critical in design registrations. Missing a filing date, renewal deadline, or examination response window can jeopardize your rights. Fortunately, the Designs Act 2003 provides mechanisms for extending time in certain circumstances.

Extensions under the act

The main provision is section 137 of the Designs Act 2003, which allows the Registrar to extend deadlines for “relevant acts” relating to registered designs, applications for registration, or proceedings under the Act (excluding court proceedings). A relevant act may include renewing a design, responding to an examination report, or filing evidence.

There are two key scenarios, i.e. extensions required due to Designs Office errors (sec 137(1)), where if a deadline is missed because of an error or omission by the Registrar, Deputy Registrar, or Designs Office staff (or service providers acting for them), the Registrar must grant an extension.

Also, Extensions requested by applicants (sec 137(2)), where if the delay was caused by an error or omission of the applicant (or their agent) or circumstances beyond their control, the Registrar may grant an extension on application.

The Registrar also has the power to extend deadlines before or after they expire (sec 137(3)). This means applicants are not automatically barred from seeking an extension just because time has already run out.

Under sec 137(4), if an extension longer than three months is sought, the application must be advertised. This opens the door for third parties to oppose the extension (sec 137(5)), unless the Registrar concludes that the application is clearly without merit, in which case it may be refused outright (s 137(6)).

If an extension is granted and the design application or registration is restored, sec 138 ensures that the registration is treated as if it never ceased. The Registrar will notify the applicant and publish a notice of restoration.

The Beneficial Nature of Section 137

Courts have described section 137 as a beneficial provision. Its purpose is to rectify genuine errors and omissions, not to punish applicants for honest mistakes. This means the Registrar is expected to approach requests for extensions in a way that benefits the applicant unless there is a strong reason not to.

Cases such as Sanyo Electric Co Ltd v Commissioner of Patents (1996) and Chalk v Commissioner for Superannuation (1994) emphasize that when in doubt, the Registrar should give the applicant the benefit of the doubt, i.e. at the same time, the Registrar must weigh the impact of extensions on third parties and the public.

What Counts as a Relevant Time Period?

An extension can only be granted where there is an existing deadline to extend. For example, section 137 cannot be used to create a right that never existed, such as antedating a design application to gain an earlier filing date.

The decision in Norman Stibbard v The Commissioner of Patents (1986) highlights that the law does not allow latecomers to displace inventors or designers who filed on time.

Grounds for Extension

To succeed, an applicant must show that the failure to act was due to error or omission by the applicant or their agent or circumstances beyond control of the applicant

The law is clear that a deliberate decision not to act on time cannot be dressed up as an “error.” However, the courts have given “error or omission” a broad and practical meaning.

In G S Technology Pty Ltd v Commissioner of Patents (2004), the tribunal noted that negligence or incompetence can still amount to an “error or omission” if it was not a deliberate choice to miss the deadline.

The applicant must also show a causal link between the error or circumstances and the missed deadline. In other words, the problem must have been the reason for the delay.

Evidence and Burden of Proof

Applicants must provide sufficient material to justify an extension. This doesn’t mean proving their case beyond doubt, but they do need to give a full and frank account of what happened.

The Registrar will look for evidence of the intention to meet the deadline, explanation of the error or circumstances and disclosure of the chain of causation

In Kimberly-Clark, the court stressed the need for transparency, i.e. applicants must expose not only the mistake but also the surrounding circumstances and decisions that led to it. Without full disclosure, an extension may be refused.

Factors Considered by the Registrar considering extension

When deciding whether to grant an extension of time under section 137(2), the Registrar exercises discretion and is not obligated to approve the request even if it appears justifiable. The decision involves weighing several key factors, including the balance between private and public interests, the transparency of the applicant’s explanation for the delay, and whether the extension would serve a meaningful purpose.

In assessing the balance of interests, the Registrar is generally encouraged to favor the applicant, focusing more on the consequences of granting or refusing the extension than on the reasons for the delay itself. This approach, as discussed earlier, was supported in Sanyo Electric Co Ltd v Commissioner of Patents (1996) 36 IPR 470, where it was emphasized that the impact of the decision should take precedence over a detailed examination of the cause of the delay.

A critical element in the Registrar’s consideration is whether the applicant has provided a full and frank disclosure of the circumstances that led to the error or omission. This includes a clear explanation of the chain of events and the conduct of all relevant individuals. In Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 13 IPR 569, the court held that a proper case for extension requires more than procedural details, it demands insight into the beliefs, decisions, and actions of those involved. However, this principle must be applied with context, as discussed.

The Registrar must also consider whether the extension would serve a useful purpose. If it is evident that the extension would not lead to a viable outcome, such as when the design registration has already expired and cannot be revived, i.e. the request will be refused. This was illustrated in New Horticulture Pty Ltd v Enviro Pak Pty Ltd [2016] ADO 2, where the design rights had ceased and could not be reinstated, rendering the extension ineffective.

Private interests are particularly relevant when a third party has a stake in the design, such as having initiated the examination. In such cases, even if public notification is not required, the Registrar may invite the third party to comment on the extension request, as provided under regulation 11.22(1).

Public interest considerations often relate to the issue of delay. Excessive or unexplained delays in filing an extension request can undermine public confidence in the system. The Registrar must be satisfied that any delay was not significantly caused by the applicant’s own actions, as emphasized in Sanyo v Commissioner of Patents. The Registrar’s decision reflects a careful evaluation of fairness, transparency, and the practical implications of granting additional time.

Third Party Protections

One of the most important safeguards in the Designs Act is section 139, which protects third parties who start using a design during a period when it had ceased.

If the design is later restored, those third parties get a statutory license to continue using it, even selling their usage rights to others. This ensures fairness to businesses that may have invested in commercializing a design they believe was in the public domain.

This protection applies regardless of whether the extension was justified or whether the third party opposed it.

Period of Extension

The length of an extension generally reflects the time that would have been available if the error or omission had not occurred. Applicants must estimate the time they need and justify it.

For example, if a response deadline was missed by six weeks due to illness, an applicant might seek a two-month extension to cover that period plus administrative processing time.

Extensions can cover-

• Completing an examination response
• Filing evidence in proceedings
• Renewing a design (if the deadline was missed due to acceptable reasons)
• Correcting or adding a convention priority claim

Special Scenarios

• Examination extensions, i.e. applications for more than three months must be advertised. Oppositions may be filed, but if unsuccessful, the opposition period itself may be treated as “circumstances beyond control” and factored into the extension.
• Renewals during a ceased period, e. if a design ceases for failure to complete examination but is later restored, the owner may still need to renew it while awaiting the outcome of the extension. Owners should not delay renewal, even if the design is technically ceased.
• Convention priority claims, e. if an applicant fails to claim or claims the wrong convention priority date, they may apply to extend the six-month convention period. However, they must also consider the linked requirement to request registration or publication, which can complicate matters if deadlines overlap.

Extensions for Formality Assessment Reports

In cases where a design application does not meet the formal filing requirements under the Designs Act 2003 and Designs Regulations 2022, IP Australia issues a Formality Assessment Report. Applicants are given two months from the date of the report to correct or respond to the deficiencies.

If the applicant cannot meet this deadline, they may request an Extension of Time under Regulation 8.3(3). Key points include:

• Duration and Limit: Extensions are typically granted for up to one month at a time. Multiple extensions may be allowed if justified, but the total period must remain reasonable.
• Grounds for Request: Valid grounds include:
  • Error or omission by the applicant or agent
  • Circumstances beyond control (e.g., delays in obtaining representations, translation issues, office closures)
• Form and Fee: The request must be filed before the deadline expires via IP Australia’s online portal, with the prescribed fee and a brief statement of reasons.
• Effect of Non-Compliance: Failure to respond within the allowed period (including any approved extensions) results in lapse of the application. There is no restoration mechanism for designs lapsed due to formality non-compliance.

Calculating Deadlines

Extensions do not reset subsequent periods. For example, if a design registered on 22 December 2020 is renewed late with a two-month extension, the second five-year period still ends on 22 December 2030, not two months later.

Deadlines are calculated under the Acts Interpretation Act 1901, with rules covering end-of-month scenarios and non-business days. If IP Australia’s office is closed on the due date, the action can be done on the next business day.

Extensions of time provide vital flexibility in the design registration system. They prevent honest mistakes or uncontrollable events from permanently destroying valuable IP rights. At the same time, the law ensures fairness by requiring disclosure, limiting abuse, and protecting third parties.

Work with us

For design owners, the key takeaway is simple, i.e. do not ignore deadlines. If something goes wrong, act quickly, provide full disclosure, and request an extension that realistically covers the time you need. With the right approach, the Registrar is likely to grant relief, given the beneficial nature of section 137.

At LexGeneris, we assist clients in preparing strong, well-supported extension applications under the Designs Act. Whether the issue is a missed renewal, an overlooked priority claim, or a delayed examination response, we ensure that your application demonstrates the necessary grounds, evidence, and justification. Our team also helps anticipate and manage potential third-party objections, minimizing risks to your design rights.

If you need advice or assistance with an extension of time for your design, contact us. Acting swiftly can make the difference between restoring your rights or losing them permanently.