What is an examination report?
During examination we search the world for identical and similar designs. If we find your design or one too similar it can prevent your design from being certified.
We will let you know in writing if your application doesn’t meet the legislative requirements. We call this written report an ‘examination report’.
What do we include in an examination report?
An examination report will include:
- the details of your registered design
- the name and direct phone number of the examiner who conducted the examination
- an explanation of why your registered design does not meet the legislative requirements for certification
- an explanation of what you can do to overcome the issues raised. Issues raised at this stage can be difficult to overcome
- the deadline for overcoming the issues. If you do not overcome the issues within this time frame your registration will cease.
Responding to an examination report
You must respond in writing. We encourage you to provide your response using our online services. We cannot accept responses via email.
When responding to an examination report:
- make sure you understand why the issues have been raised. If you need further clarification, ring your examiner as soon as possible. They are more than happy to assist you
- make sure you include your name and what company you are from (if applicable). We need to ensure you are authorised to respond.
You have 6 months from the date of our examination report to resolve the issues raised. If you can’t overcome the issues within this time, your registration will cease.
It is important to respond as soon as you can. This will give your examiner plenty of time to consider your response and let you know if any further information is required.
Under limited circumstances the 6-month timeframe can be extended for a fee. Learn more about extensions of time.
What are some common issues raised?
Common issue 1: Your design is not new
This issue is raised when your examiner finds an earlier identical design when searching for prior art.
This issue often occurs if you have published your own design online before you applied for a design right. If this is the case, you will generally not be able to overcome this issue.
This issue can also occur if someone publishes your design without your permission. This can be a complex issue to overcome. If your design is published without your permission, you will need to demonstrate that it was an unauthorised disclosure. It may be in your best interests to consult an IP professional before you respond.
Common issue 2: Your design is not distinctive
We raise this issue when we find an earlier design which is substantially similar to your design. This could be an earlier design created by you or one of your competitors.
There are many legal factors we must apply when considering similarity, especially those in Section 19 of the Designs Act 2003.
While not an exhaustive list, these are some of the factors:
- More weight is given to similarities between designs, rather than any differences..
- We consider the new and distinctive features highlighted in your Statement of Newness and Distinctiveness.
- We consider the viewpoint of people who would be familiar with the product to which the design relates (this is known as an informed user).
- We consider your design in the context of other designs found when searching for prior art. If the prior art base is well developed, it may be expected that informed users will have a greater awareness of small differences between competing designs. If the prior art base is poorly developed, differences will likely need to be large in order for them to be considered distinctive.
- We consider any constraints (such as engineering, functional or legal) the designer has, which could limit their ability to innovate.
When an examiner has found that an earlier design is similar to your design and you disagree, a useful way to respond may be to provide side by side images of both designs to highlight their similarities and differences. Providing images along with a written response will help us to understand why you believe the designs are different and why any differences are important.
Even if you are unfamiliar with the earlier design, it is more than likely that you are familiar with the field. The more information you can provide about the design and environment in which it is used will assist us when considering your response.