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OFFICIAL NOTICE
5 February 2001
s.27B(2) applications for extension of
time -
more than 3 months
Change of Practice
For many years, the practice of the Registrar of Designs with
regard to requests under s.27B(2) for an extension of more than 3 months, has
been to review the request before advertising it under s.27B(4). The Registrar
would ask for further justification where the request appeared to be deficient,
and would proceed to refuse the application if she thought that no extension
was possible. This practice ensured that the request was in good order before
advertisement occurred, thereby ensuring that any opposition under s.27B(5)
would be initiated in the full knowledge of the basis of the extension.
This practice was the subject of a recent application to the
Administrative Appeals Tribunal for review of a decision of the Commissioner
of Patents.
This issue was in fact considered (in the context of s.160
of the Patents Act 1952) by the full bench of the Federal Court in Deputy
Commissioner of Patents v Board of Control of Michigan Technological University
(1980) AOJP 3137 at 3145. In that decision, Franki J (Smithers and Keely JJ
concurring) stated:
"the requirement with regard to advertising cannot depend
upon the view the Commissioner takes about the merits of the application or
about his jurisdiction to determine it so long as it is clearly an application
purporting to be made under s.160(2)."
If advertisement under the Patents Act "cannot depend upon
the view the Commissioner takes about the merits of the application", there
is no purpose to be served under the Designs Act by the Registrar reviewing
an application before advertisement - as the advertisement must proceed whatever
the view of the Registrar about the merits of the application. Consequently
it is clear that the past practice of the Registrar has been in error.
Effective immediately, the requirements of the legislation
with regard to the advertisement under s.27B(4) will be strictly applied. That
is, if an application under s.27B(2) is filed requesting an extension of time
for more than 3 months, it will be advertised for opposition purposes without
any consideration by the Registrar of the merits of the request.
Practical effects of the change in practice.
There are several issues that practitioners need to be aware
of, consequent upon this change in practice.
1. Fees.
The Registrar will not advertise an extension until the relevant extension fee
has been paid (in full). [Note that, where the s.27B(2) request is to extend
the time to pay a fee, eg renewal fee, this does not apply with respect to the
quantum of that fee; it only applies with respect to the s.27B application fee
per se.]
2. No declaration.
A small number of s.27B(2) requests are currently filed with no declaration
[Reg 26(2)], with an indication that a declaration 'will be filed shortly'.
The requirement of a declaration is a formality issue, that does not detract
from the existence of an application under s.27B(2). Accordingly, an application
under s.27B(2) will be advertised under s.27B(4) notwithstanding the absence
of a declaration. Note that, in distinction from past practice, the Registrar
will not remind the applicant to file the declaration.
3. Request inadequate for its intended purpose.
Advertisement under s.27B(2) cannot depend upon whether the 'act' in which the
request is in respect of, has been effectively done within the extended period
sought by the request.
Currently a number of requests are received which seek an
extension in respect of the wrong 'act' not having been done. Such defects will
not be considered prior to advertisement under s.27B(4), and may require a completely
new s.27B(2) request be filed in respect of the correct error or omission.
Similarly, for an extension of time to pay a fee (such as
a renewal fee), advertisement under s.27B(4) cannot depend upon an assessment
of whether the fee was in fact (fully) paid within the extended period. If a
fee shortfall is paid at a later date outside the period sought to be extended,
there will be a need to file a completely new s.27B(2) request to cover the
period from the originally due date to the date the fee was in fact paid in
full.
4. Oppositions.
If an opposition is filed, the Registrar will proceed to consider the application
solely in the context of that opposition (ie. she will not conduct any preliminary
assessment of whether the request is in respect of the correct period, or correct
action, or has any justification.) If no declaration in support of the application
was on file at the time the opposition was filed, or the substantive justification
for the extension only appears during the proceedings (such as in evidence-in-answer),
the Registrar will entertain applications to vary the award of costs, including
the award of actual costs, depending on the facts of the case.
5. If no Opposition.
If no opposition is filed (or any opposition is withdrawn), the Registrar will
proceed to consider the application. In the absence of any declaration in support
of the request, or if the Registrar considers the extension is not justified,
the Registrar will advise the applicant of why she considers the application
lacks justification, and will set the matter for hearing vis-à-vis refusal of
the application. The applicant will be entitled to file further material in
support of the request prior to the hearing. If such material is filed with
sufficient time before the hearing for the Registrar to consider it - and she
is satisfied on the basis of that material that the extension is justified -
she will cancel the hearing.
6. Waiver/refund of fees.
Under the past practice of the Registrar, applicants with insufficient justification
frequently withdrew the application before advertisement under s.27B(4). In
such cases the Registrar was prepared to waive a large component of the s.27B(2)
application fee paid under fee item 3 (having regard to the fact of withdrawal
occurring before advertisement.) Since such applications will now proceed to
advertisement upon filing the application, the past practice regarding waiver
of the s.27B(2) application fee has no application; that is, partial refunds
upon withdrawal of s.27B(2) requests will no longer be available.
7. Pending requests.
There are pending requests where the Registrar has asked for further information
to support the request, or where a declaration in support has not been filed.
All these applications will be advertised under s.27B(4) as soon as possible,
irrespective of whether the applicant has responded to the Registrar's request
for more information, or for a declaration. The Registrar will not give any
further consideration to those applications until the respective period for
filing an opposition has expired. Thereafter, the Registrar will consider the
application in accordance with the preceding paragraphs.
8. Common deficiencies.
Common deficiencies that occur in s.27B(2) requests are:
- The request is for the incorrect period;
- The request is in respect of the incorrect action;
- The request is in respect of a matter that cannot be extended
[eg requests to file a first-instance application; requests in respect of
matters where the Registrar has become functus officio]
- The declaration is of low evidentiary value due to lack
of specific information or 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 an error
was committed "by person X, formerly of our employ", 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 Registrar will not give any consideration to such deficiencies
until the request falls to be determined subsequent to advertisement under s.27B(4).
In all likelihood, extensions for the wrong period, or for the wrong matter,
will need to be rectified by way of a completely new application - so that the
advertisement under s.27B(4) relates to the actual matter the subject of the
extension.
Other matters
This change of practice relates solely to s.27B(2) requests
that must be advertised under s.27B(4). In particular, the Registrar's practice
for dealing with:
- s.27B(1) matters; and
- s.27B(2) requests that are not advertised under s.223(4)
will continue without change.
Enquiries concerning this change of practice
Victor Portelli
Deputy Registrar of Designs
(02) 6283 2093
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