09 February, 2015

Lost Correspondence and Extension of Time Provisions at the Australian Designs Office

Lost Correspondence and Extension of Time Provisions at the Australian Designs Office

In Australia, the Designs Act 2003 (Cth) (‘the Designs Act’) and the Designs Regulations 2004 (Cth) (‘the Designs Regulations’) allows, in certain circumstances, an applicant of a design application to apply for an extension of time to belatedly do a missed action.

Section 137 of the Designs Act applies when a ‘relevant act’ required to be done within a certain time is not, or cannot be, done within that time, for example, if correspondence is lost or goes missing. Any time period set in the Designs Act or Designs Regulations for the doing of a ‘relevant act’ is capable of being extended.

A particular situation can occur in relation to a Pre-Registration Formalities Notice, which may issue in relation to insufficiencies identified in a design application form or associated representations. Importantly, if a response to a Formalities Notice is not submitted and the objections not overcome within the specified timeframe, a design application lapses.

If a Formalities Notice is lost or goes missing, Section 137(1) or Section 137(2) can be relied upon. For Section 137(1) to apply, an error or omission by the Designs Office must have occurred. For Section 137(2) to apply, (a) an error or omission by the applicant or their agent, or (b) circumstances beyond control of the person must have occurred.

Under Section 137(2)(b), the Registrar still has a discretion, as provided by the language “the Registrar may…” in section 137(2), as opposed to “the Registrar must…”as set out in section 137(1), which provides no such discretion to the Registrar where the failure to do the act was because of an error or omission by the Designs Office.

Section 137(2)(b) – Circumstances Beyond Control

In this example, an application for an extension of time should state that the reason for the extension of time is because of circumstances beyond the control of the applicant. That is, the relevant act (overcoming the matters raised) could not be done within the certain time because of circumstances beyond the control of the applicant, pursuant to sub-section 137(2)(b).

Any circumstances that arose after the deadline are irrelevant to assessing whether “because of circumstances beyond the control of the person, the relevant act that is required to be done within a certain time is not, or cannot be, done within that time” as per sub-section 137(2)(b). Nothing that occurs after the deadline (the “certain time”) can have any causal connection to the failure to have done the relevant act by the Deadline (“that time”, being the “certain time” as set out in section 137(2)).

Often, however, it can take time for lost or missing correspondence to be identified. What is the consequence of a delay when seeking an extension of time?

Delays and the Registrar’s Discretion

The Registrar has a discretion when the error is not the fault of the Designs Office as to whether or not to extend the deadline. This discretion is typically applied where a delay has occurred.

The Examiners’ Manual sets out that, where a delay has occurred, an explanation in the form of a declaration should be provided. The Examiners’ Manual also sets out that, when considering any delay in filing an application for extension of time, 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”.

The Relevant Case Law

Authority as to when the Registrar should be satisfied that an extension should be provided if and when there has been a delay in filing an application for extension of time is provided in the Examiners’ Manual and refers to Sanyo v Commissioner of Patents 36 IPR 470 (‘Sanyo’).

In Sanyo, earlier decisions of the Courts concerning the approach to be taken when exercising discretion to extend time are recited (at 16), including:

  • 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” (per Davies J in Chalk’s case, at 156);
  • actions of the agent of a principal should not necessarily be regarded as being the actions of the principal (A’Hearn’s case); and
  • 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).

Considering the first point above, the consequences of refusing to extend time would be the loss of the applicant’s rights in the design that is the subject of the application. This would result irrespective of the absence of fault or inaction on the part of the applicant.

In regards to the second point, the only actions which contributed to the delay in filing the extension, may be attributed to the Applicant’s agent (for example, further correspondence is misprocessed or misplaced). In this case, no action was a result of the direct actions of the principal (being the applicant of the design application).

In regards to the third point, and particularly in view of the fact that the delay was not at all attributed to the applicant, and that a satisfactory explanation of the delay has been provided, the discretion to extend time should be applied beneficially in this case so as to retain the rights of the Applicant.

In Sanyo, in allowing an extension of time, the Tribunal found that the delay in filing an application for extension of time was explained by a series of errors made by the applicant’s (Sanyo’s) agents. The Tribunal specifically stated (at 18):

“They are errors made by Sanyo’s agents independently of any actions of Sanyo and the consequences of those errors leading to the patent lapsing should not be visited on Sanyo”.

In Sanyo, the Tribunal found that there were additional errors attributable to the applicant (Sanyo), however the Tribunal stated (at 18):

“The Tribunal does not believe that they should result in the wait to be accorded to the public interest component to be such as to give rise to Sanyo being excluded from the exercise of a favourable discretion. There is no evidence of any third party seeking protection or compensation if the Extension of Time is granted, despite the advertisement in the Official Journal of 2 March 1995”.

In this example, no error or delay whatsoever is attributable to the Applicant. There is no evidence of any third party seeking protection or compensation if the extension of time is granted.

Importantly, the extent of a delay in filing the extension of time should not prejudice the availability of an extension of time, so long as there has been a satisfactory explanation of the delay. As set out in Sanyo (at 17):

Since the exercise of the discretion contained in that section is unconfined, it would not be the correct approach to adopt, without qualification, the proposition that the longer the period of time that has passed since the lapse of the patent, the less likelihood there will be of an Applicant succeeding in having the discretion exercised favourably”.

In view of the above, the Registrar’s discretion in granting the extension of time should be afforded beneficially to the applicant, who has been at no fault throughout the process. Lost or missing correspondence should not negatively impact upon the applicant.

Spruson & Ferguson, IP Australia and B2B

Spruson & Ferguson was the first firm in Australia to implement “Business to Business” (B2B) electronic transactions with IP Australia, which allows for electronic correspondence between Spruson & Ferguson and the Australian Designs Office.

The implementation of the B2B communication should obviate “lost mail” and thus the need for applicants of design application to submit extension of time requests.


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