How to respond to an examination report

Here's how to respond if you receive an examination report. 

At a glance

  • An examination report highlights issues with your application
  • You'll need to explain how your design is new and distinctive from existing designs
  • You may be able to claim the 12 month grace period in some circumstances
  • Respond to your report via online services

What is an examination report?

An examination report indicates that we've found problems with your application to certify your registered design.

We've conducted a world-wide search for other designs —  which we refer to as 'searching the prior art base' — and have found others identical to, or similar to yours.

Common issues raised in an examination report

This means our search has identified one or more identical designs.

This might be because:

  • You've published your design, or
  • Someone else has published your design without your permission, or
  • Someone else has come up with the same design and has published it prior to your application.

This means our search has identified one or more designs that are substantially similar to yours.

This might be because:

  • You've published a design similar to the current one, or
  • Someone's published your design without your permission, or
  • Someone else has come up with a similar design and has published it prior to your application.

Options for responding to an examination report

How you respond will depend on the issues outlined in your examination report. We suggest you call the examiner who sent the report if you need more information.

Alternatively, consult an IP professional for advice on next steps.

Get professional assistance

1. If you applied after 10 March 2022 and the earlier design was published after 10 March 2022: 

You may be able to overcome the issues under the grace period.

In Australia, there's s a 12 month grace period which protects designers who disclose their design before filing for protection. This means if you publish your design within 12 months of applying for a right, you may still be able to achieve protection.

How the grace period works

2. If you disagree with our assessment, the grace period doesn’t apply, and your design isn't new:

There may not be anything you can do to overcome these issues.

3. If you disagree with our assessment, the grace period doesn’t apply, and your design isn't distinctive:

You can provide written information about why your design isn't too similar to those we've identified in the report. You can include images, such as a side-by-side comparison of the designs, and an explanation of why the differences are important.

4. If someone else has published your design without your permission:

You may still be able to overcome this issue. You'll need to provide us with information about how this has happened and demonstrate that it was published without your permission.

What we consider when we look at similar designs

In our examination, we will:

  • Take the viewpoint of an informed user — someone familiar with the product to which the design relates
  • Give more weight to similarities between designs, rather than differences
  • Consider your design in the context of the other designs we found when searching for prior art. If the prior art base is well developed, small differences between competing designs will be considered distinctive. If the prior art base is poorly developed, differences will need to be larger in order for them to be considered distinctive
  • Consider any constraints imposed upon a designer that could limit their ability to innovate. This might include engineering, functional or legal factors.