Responding to Formalities or Substantive Objections in Australian Design Applications

When you apply for a registered design in Australia, the goal is to secure protection as quickly and smoothly as possible. However, during the registration or certification process, you may receive a Formalities Notice or an Examination Report from IP Australia.

Formalities Notice

A Formalities Notice is issued during the registration step if IP Australia finds technical or procedural issues in your application. The good news is that these issues are usually straightforward to fix.

The notice will outline the issues found, explain how to correct them and give you two months to respond (extensions are possible in limited circumstances, for a fee)

Receiving a Formalities Notice does not mean your application has been rejected, i.e. it’s simply a request for clarification or missing details.

Examination Report

An Examination Report, on the other hand, is issued if you’ve requested examination (to certify your design) and the examiner finds problems with its registrability. This stage involves a search of the “prior art base”, i.e. other designs worldwide, to check whether your design is new and distinctive.

These objections can be more complex to address than formalities issues and often require legal or strategic arguments.

What is contained in a Formalities Notice?

• Missing Mandatory Details– Some required information may be missing from your application. The notice will specify what’s needed, and you can usually resolve this by simply providing the missing details.
• Unclear Product Name– IP Australia uses Locarno Classes to categorize designs. If your product name is vague or generic, they can’t classify it correctly. For example, “container” might be too broad; “plastic food storage container” is clearer. Updating your product name generally fixes the issue.
• Inconsistent Representations– If your application’s images or drawings suggest more than one design when you only intended one, IP Australia will ask you to clarify. Your options are-
  • Make your representations consistent (no extra fee)
  • Withdraw all but one design (no extra fee)
  • File further designs as separate “excluded designs” (extra fee)
  • Convert the application into a “more than one design” application if they share the same Locarno Class (extra fee)

Responding to a Formalities Notice

If you receive a Formalities Notice-

• Read it carefully to understand exactly what’s required.
• Contact the case officer if anything is unclear, as their details will be on the notice.
• Respond promptly. You have two months to make the changes and have them reviewed. This timeframe includes back-and-forth with IP Australia, so don’t leave it to the last minute.

If your application needs changes, you’ll generally be allowed to narrow the scope (such as removing extra designs) but not expanding it. Adding new features or designs not in your original application will require a fresh application.

What is contained in an Examination Report?

When a design is examined for certification, IP Australia may raise objections and provide in the examination report because-

• Your Design Isn’t New– Their search found an identical design. This could be because you published your design before applying, someone else published it. without your permission, or another person independently created and published it earlier
• Your Design Isn’t Distinctive– The design is too similar to existing ones. This might be because you published a similar design before, someone else published it without your permission or another person created a similar design earlier

Responding to an Examination Report

The process depends on the nature of the objection and the timing of your application.

Step 1, i.e. Read the Report Carefully- Understand whether the objection is about novelty, distinctiveness, or both.

Step 2, i.e. Seek Clarification if Needed- Contact the examiner if you need to clarify any point, ensuring that an authorized person from your company or legal team makes the call.

Step 3, i.e. Submit Your Response- You must address each objection clearly, either through factual evidence, legal argument, or both.

Strategies for Overcoming Substantive Objections

• Using the 12-Month Grace Period– If your application was filed on or after 10 March 2022, and the prior design was published after that date, you may be able to rely on the grace period. This provision protects designers who disclose their design within 12 months before filing. It’s particularly useful if you accidentally publish your design, i.e. for example, on social media, before applying.

However, relying on the grace period has risks-

• • If someone else starts using a similar design during the grace period, they may have a defense against infringement (“infringement exemption for prior use”)
  • It’s safer to file before disclosure where possible

To claim the grace period, you’ll need to submit a declaration outlining when the design was first disclosed, who disclosed it and how it was published or used.

• Arguing Against the Similarity Assessment– If you disagree with the examiner’s assessment, you can provide written submissions explaining why your design is not too similar to the cited designs. Include-
  • Side-by-side comparisons
  • Explanations of why differences are significant from an informed user’s perspective
  • Evidence of how the design is used in context
• Proving Unauthorized Publication– If the design was published without your permission, you may still be able to proceed by showing how the unauthorized publication occurred, evidence of lack of consent and that you are the rightful owner.

What do Examiners consider during such processes?

Examiners assess designs from the viewpoint of an informed user, i.e. someone familiar with the product type. They-

• Focus more on similarities than differences
• Consider how developed the “prior art base” is (in a crowded field, small differences matter more)
• Factor in constraints that may limit design variation, such as engineering or legal requirements

Timely and Accurate Responses

Missing deadlines is one of the quickest ways to jeopardize your chances of securing design registration. Whether you’re responding to a Formalities Notice or an Examination Report, strict timelines apply. Applicants are generally given two months to respond, and while extensions may be granted, they are only available under limited circumstances and typically involve additional fees.

Failure to provide a complete and timely response can result in the application lapsing, effectively ending the registration process. It’s therefore essential to deal with these deadlines with urgency and precision. A well-prepared response does more than just resolve the objections raised, it reinforces the strength and defensibility of your design rights, positioning your application for a smoother path to certification.

How We Help?

We work closely with design applicants to review and interpret formalities and substantive objections, prepare accurate, compliant responses within deadlines, advise on strategic use of the grace period, draft submissions and evidence to support distinctiveness arguments and liaise with IP Australia on your behalf

By managing the process end-to-end, we help ensure that your design application overcomes objections efficiently, giving you the best chance of securing strong, enforceable protection.

If you’ve received a notice or report from IP Australia, contact us immediately so we can start preparing a tailored response and protect your design rights without delay.