D10 Amendments
Chapter 10 - Amendments
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D10 Amendments
Table Of Contents
D10 Amendments ................................................................................................................. 5
D10.1 Overview .................................................................................................................... 5
D10.1.1 How amendments are ‘Made’ .............................................................................. 6
D10.2 Ambit of s.28 amendments ......................................................................................... 7
D10.2.1 Time for making S.28 amendments ..................................................................... 7
D10.2.2 Amending a Statement of Newness and Distinctiveness ...................................... 8
D10.2.3 ‘Voluntary’ requests to amend under s.28 ............................................................ 8
D10.3 Ambit of s.66 amendments ......................................................................................... 9
D10.4 Allowabililty - inclusion of matter not in substance disclosed ..................................... 10
D10.5 Allowability - increasing scope of the Design Registration ........................................ 12
D10.6 Amendments of Statement of newness and distinctiveness ...................................... 14
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D10 Amendments
D10 Amendments
D10.1 Overview
The Designs Act provides four amendment mechanisms:
1. S.28, together with R.3.09. – Amending a design application before registration.
This most frequently arises consequential to the formality check under s.41. The only
limitation is that the amendment must not alter the scope of the application by the
inclusion of new matter.
2. S.66, together with R.5.05. – Amending the registration during examination. The
amendment must not increase the scope of the design registration, and it must not
alter the scope of the application by the inclusion of new matter.
3. S.120 – Rectification of the Register ordered by a court (which could include
amendments).
4. Reg 9.05 – Correcting clerical errors and obvious mistakes on the Register (as well
as name and address changes).
This part of the manual is concerned with amendments under s.28 and 66. Amendments
under reg.9.05 are dealt with in D12.4. Court ordered rectifications are dealt with in D12.5.
The ALRC report contains no detailed discussion on amendments – Recommendation 83
(accepted by the Government) merely recommended the retention of s.22B of the 1906 Act.
S.22B contained a combined form of the concepts of increasing the scope of the application
for registration, and of including matter not in substance disclosed. The 2003 Act has
separated these concepts into discrete criteria - with only the ‘in substance disclosed’
criterion applying before registration.
The limited precedent on s.22B of the 1906 Act must therefore be considered with care.
Some assistance may be obtained from precedence under the amendment provisions of the
Patents Act, where these concepts have been traditionally treated separately – although
care is required, given the differences in how the monopoly right is obtained under the
different Acts.
The allowability of amendments to a design may involve a determination of the disclosure of
the design before amendment, and the effect of the amendment on the scope of the design.
Since such amendments directly affect the s.19 considerations of distinctiveness,
consistency requires the determination of the disclosure before amendment, and the effect
of the amendment on the scope of the design, be assessed by reference to the standard of
the informed user. See D09.9.2
Where the examiner considers an amendment is not allowable because it increases the
scope, includes matter not in substance disclosed (or is not a clerical error or obvious
mistake), the question of ‘burden of proof’ may arise. Where the examiner raises an
objection based on s.66(6), the owner needs to provide material sufficient to justify the
administrative exercise by the Registrar or her delegate, of the power to amend the
Registration. That might be by way of persuasive argument, or declaratory evidence from
relevant informed users. [See D09.9.4 regarding assessing such material.]
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D10.1 Overview
Submissions that the examiner must ‘prove’ that the amendment is contrary to the s.66(6)
requirements (or mere assertions that the examiner is wrong) indicate a misunderstanding of
the owner’s obligations. The owner needs to provide the Registrar with clear and convincing
reasons (based on the design and any relevant supporting material) why she should
exercise her power to amend the registration. Mere assertions that the examiner must prove
the amendment is contrary to s.66(6), or that the ‘examiner is wrong’, do not provide the
Registrar with any reason to exercise her power to amend the design.
D10.1.1 How amendments are ‘Made’
The process of making amendments under the Designs Act involves the following steps:
1. The applicant or owner proposes amendments;
2. The Registrar considers the amendments for allowability under the Act or regulations
3. And if allowable and at an appropriate stage, the amendments are ‘made’ and
incorporated into the relevant documents.
In the examination process, the amendments remain as ‘proposed amendments’ up until a
certificate of examination is issued. It may be noted that if a third party is heard pursuant to
s.67(3), the fact that the amendments still have the status of proposed amendments allows
the third party to challenge the validity of those amendments (providing that would have a
consequential effect on the validity of the Design).
During examination, amendments are made by way of s.66. As is made clear by regulation
5.03(5), further reports must consider whether grounds of objection would be removed if the
register were amended as proposed in the request. Similarly, when the examiner completes
the examination, s.67(2) refers to the giving of a notice that a ground of revocation could be
removed if the Register were amended as proposed. And s.67(3) provides for the actual
amendment of the Register.
A request to amend may involve several individual items. For example, a change to the
product name as well as a change to a representation. While an examiner may typically
raise objections with respect to only some specific items of the amendments, allowance of
the amendment is made with respect to the entire amendment request (as amended). In
particular, there is no scope for an examiner to selectively allow some amendments and not
others. Nor (for amendments under s.28 or regulation 9.05) is there scope to make some of
the requested amendments, while arguing over the allowability of others.
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D10.2 Ambit of s.28 amendments
D10.2 Ambit of s.28 amendments
Amendments under s.28 occur prior to registration. The amendments can relate to any
document making up the application. That is, amendments may be made to details in the
request form (such as the details of the priority document, details of designers and owners)
as well as details relating to the actual design – such as the product identification and the
representations.
However while s.28 amendments are largely unconstrained, there are in fact some
significant constraints:
•
Amendments to any document that results in the definition of the design changing
are only allowable if they do not include matter not in substance disclosed in the
original application, representations or other documents;
•
Amendments to documents filed by other persons are not allowable. While such
documents are held on the file of the design application, they are not documents of
the ‘design application’ as set out in s.21. [For example, documents filed under s.29
by a third party are not amendable by the applicant of record].
•
Amending a document such as the priority document, or a declaration or affidavit
filed by the owner, has the effect of voiding the authenticity of the document. As a
result, if the document had been filed to meet a purpose, an amendment of the
document would likely mean that purpose was no longer fulfilled. [Generally
speaking, where an amendment of an authenticated document is desired, an
authenticated amended document should be filed.]
D10.2.1 Time for making S.28 amendments
Amendments under s.28 can be made to an application at any time. Importantly, an
application does not cease to be an application when a design disclosed in the application is
registered – which means (at least in principle) amendments to a design application may be
made after some or all the designs have been registered – see Reckitt Benckiser Inc [2008]
ADO 1, at paras 14-16. However, as stated in para 16 of that decision:
… while it is possible to amend the application under s.28 after registration – that
doesn’t mean that s.28 amendments after registration affect the monopoly rights in the
Design. The primary rights of a Design are established by the entry in the Register.
And the Register can only be amended by way of s.66 and/or regulation 9.05 [with
their associated limitations on the amendment.] An amendment of the design
application after grant does not amend the Register. Nor does it enliven a basis to
amend the Register to align with the amended application (for example, by asserting a
clerical error or obvious mistake by reason of the consequential inconsistency
between the application and the Register); any amendment to the Register must of
itself meet the conditions of s.66 or reg. 9.05. That is, post registration amendments of
the application in relation to matters which are entered on the Register prima facie
have no purpose – and consequently discretion might apply to refuse such
amendments on the basis of lack of purpose.
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D10.2 Ambit of s.28 amendments
D10.2.2 Amending a Statement of Newness and
Distinctiveness
The Statement of Newness and Distinctiveness is a statement that only exists on the
application file. It is not included on the register – regulation 9.01(d). Accordingly
amendments to that statement are by way of s.28.
However in defining the Statement of Newness and Distinctiveness, s.19(2)(b) refers to the
existence of a statement in the design application in the past tense. This was discussed in
Reckitt Benckiser Inc [2008] ADO 1, where it was concluded:
that the definition of the statement of newness and distinctiveness in s.19(2) is a
reference to such a statement as in existence immediately prior to registration.
Accordingly, while the statement can be amended (including added or deleted) under s.28
prior to registration, any amendment under s.28 to the text that makes up the Statement
after registration does not have the effect of amending that Statement – rather it creates new
text that serves no purpose, and any such amendment should be rejected for lack of
purpose.
D10.2.3 ‘Voluntary’ requests to amend under s.28
The scope of amendment under s.28 is largely unfettered – the only restriction being the
prohibition against including new subject matter [s.28(3)].
The majority of requests to amend under s.28 will be for the purpose of correcting
deficiencies identified in a formalities report under s.41. However s.28 is not limited to being
in response to such a report – the applicant can request amendment of their own volition.
Two pertinent examples of ‘voluntary’ amendments are requests to:
•
amend the Statement of Newness and Distinctiveness to better identify particular
features of the design;
•
delete a request for registration or publication
In either case, the amendment can be effected providing the processing of the application
has not progressed past registration or publication (as appropriate). An owner wishing to
make such an amendment has uncertain knowledge about when registration or publication
might occur (unless they have received a formalities report and have not responded to it). In
those circumstances the owner should initially contact the Customer Service Centre to
enquire as to the status of their application and confirm whether an amendment may be
made before an application is published and potentially registered. It should be noted that
registration of the design while a voluntary s.28 amendment is pending is not ultra vires –
see Reckitt Benckiser Inc [2008] ADO 1, paras 21, 22.
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D10.3 Ambit of s.66 amendments
D10.3 Ambit of s.66 amendments
S.66 amendments are only available in the course of examination. These amendments are
limited to matters relating to the registrability of the design. This follows from the s.65(2)
limitation of the grounds of revocation as considered under the examination provisions
(Chapter 5 Part 3) to:
•
the design is not a registrable design [s.65(2)(a)]
•
the design should not have been registered because of s.43 [reg. 5.02]
That is, amendments under s.66 are only available in respect of matters affecting newness
and distinctiveness [s.15(1)], and the matters set out in s.43.
Consequently amendments to bibliographic-type information associated with the design
registration – such as the name of the designer or owner – are outside the scope of
amendments under s.66. Similarly amendments to other details entered on the register –
such as licences, assignments, or other interests – are not amendable under s.66. [Changes
in those matters must be dealt with under regulations 9.03 or 9.05 – See Part D12 of this
manual.]
Under s.66, a pre-requisite for the making of amendments is the fact of the Registrar being
satisfied that a ground of revocation made out. Where she is so satisfied, the Registrar
MUST inform the owner [s.66(2)], and typically amendments under s.66 will be filed in
response to that notification.
There may be circumstances where the owner believes that a ground of revocation may
exist on the basis of information not before the Registrar, and wants to make relevant
amendments during examination – irrespective of whether the examiner raises the particular
ground of objection. When assessing whether amendments may be filed under s.66(3):
•
The precondition is the Registrar’s satisfaction that a ground of revocation exists.
While s.66(2) requires notification to be given, the giving of that notification is NOT a
precondition for 66(3).
•
Where an owner indicates they are making amendments to avoid a ground of
objection arising on an unspecified basis, it is appropriate for the Registrar to
proceed on an implied consent basis that there is a ground of revocation that has
been made out for the purposes of s.66(1). [Indeed, public interest issues would
preclude her from rejecting an amendment that would otherwise narrow the scope of
the monopoly.]
•
Any amendment sought must nevertheless fall within the ambit of s.66. That is, it
must be limited to issues of newness and distinctiveness, and s.43 matters. As noted
above, amendment of (for example) the name of the owner or designer is not
allowable under s.66.
Consequently, when an owner seeks amendments under s.66 for the generic purpose of
overcoming a ground of revocation, the Registrar will not assess the amendments against
the grounds of revocation raised in the last examination report. Rather, the Registrar will
proceed on the basis that there is a relevant ground of revocation, and assess the
amendments in accordance with the requirements of s.66(6).
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D10.4 Allowabililty - inclusion of matter not in substance disclosed
D10.4 Allowabililty - inclusion of matter not in
substance disclosed
Under both s.28 and s.66, and amendment is not allowable if it would:
Alter the scope of the {application/registration} by the inclusion of matter that was not
in substance disclosed in the original design application, representation, or other
documents.
[s.28(3), s.66(6)(b)]
Chris Ford Enterprises Pty Ltd v. B. H. & J. R. Badenhop Pty Ltd (1985) 4 IPR 485 at 498
concluded [in respect of s.22B of the 1906 Act]:
“It would seem that it is designed to exclude amendments which extend the scope in
some fundamental way and make disclosures clearly beyond those already made. The
terms of S22B(1A) are in a sense imprecise and call for the exercise of judgement.
Reading the section as a whole it is proper to conclude that parliament intended
genuine amendments reasonable in scope should be permissible and that the
restrictive provision of S22B(1A) should be interpreted accordingly.”
Invacare Corporation [2013] ADO 4. A request under s.66 for the product name to be
amended (from “Wheelchair chassis” to “Front frame of wheelchair chassis”) was denied on
the basis that a front frame was not disclosed in the product representations. The
amendment would have altered the scope of in this case the registration by referencing
matter not originally disclosed in the representations.
Some guidance on what is a ‘genuine amendment reasonable in scope’ may be ascertained
from Patent cases:
•
Ethyl Corporation's Patent (1972) RPC 169, "disclosed in substance" means either
expressly disclosed or impliedly disclosed. Impliedly disclosed means that it would be
implied by the informed user.
•
AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 (High
Court):
"....... The substance must appear from the language itself interpreted in
accordance with ordinary rules of interpretation with a knowledge of the prior
state of the art to which the claim relates."
To put these decisions into the context of Designs: the substance must appear from the
original design application, representation, or other documents, interpreted in a normal
manner and from the perspective of an informed user.
Consequently while the requirement essentially requires explicit disclosure, exact disclosure
is not required. For example, an amendment to change a representation from a plan view to
an isometric view would be allowable – provided the isometric view did not disclose features
that were not present in the plan view. Similarly, making explicit those details that an
informed user would necessarily imply from the representations would be allowable.
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D10.4 Allowabililty - inclusion of matter not in substance disclosed
Note: This issue can be illustrated in the context of assessing the disclosure in citations.
World of Technologies (Aust) v Tempo (Aust) [2007] FCA114 at paras 60 and 61 raises a
situation where the information in a citation was insufficient to support a lack of newness, but
the citation established lack of distinctiveness. The ‘missing’ information for the ground of
lack of newness could not have been in substance disclosed in the citation – as otherwise
the ground of not new would have applied.
The test for ‘in substance disclosed’ is applied with reference to the disclosure in ‘the original
design application, representation or other documents.’ That is, any document filed as part of
the application. This would include (for example) the covering letter, and any statements of
newness and distinctiveness. And there is no time restriction – such that a disclosure in a
covering letter could be used as the basis for an amendment many years after registration
and certification.
Additionally, where a single design application is filed containing plural designs, the
assessment of ‘in substance disclosed’ is made having regard to the disclosure in ALL those
designs – irrespective of whether the files of the other design applications are open to public
inspection..
Note 1: Where a request to amend depends on a disclosure associated with a different
design (either by express inclusion, or by way of argument) and that other design has not
been registered or published, a copy of the material being referred to is to be placed on the
current file to ensure its public availability in association with the current file.
Note 2: If the applicant
*
amends under s.28 to delete certain designs (irrespective of whether a new application
is filed under s.23); or
*
withdraws one or more designs under s.32
those designs were nevertheless disclosed in the original design application, and may
provide the basis for amendment.
In theory, the situation could arise where an amendment including matter not in substance
disclosed was incorrectly allowed. If there is a subsequent amendment for another purpose
that happens to contain that same material (e.g. substitution of representations containing
the previous amendment together with a new amendment), no objection to the previous
amendment can be made. The amendment considerations under s.66(6)(b) are limited to
whether the ‘current’ amendment has the effect of including matter not in substance
disclosed.
While the same considerations apply for pre-registration amendments under s.28, in practice
that situation is extremely unlikely to occur.
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D10.5 Allowability - increasing scope of the Design Registration
D10.5 Allowability - increasing scope of the Design
Registration
Amendments under s.66 have the additional requirement that they ‘must not increase the
scope of the design registration’. This is to be understood in the context of amendments
under s.66 being limited to addressing issues of newness, distinctiveness, and the s.43
matters.[s.65(2)].
The concept of ‘increase the scope of the registration’ has only one meaningful measure that is,
"would the amendment make anything an infringement which would not have been an
infringement before the amendment?"
This is the so-called ‘Distillers Test’ [The Distillers Co. Ld.'s Application (1953) 70 RPC 221
at page 223], and assesses scope by considering the effect on third parties (the public).
This issue was applicable in Invacare Corporation [2013] ADO 4. After grounds for
revocation were raised, the owner requested the product name be amended (from
“Wheelchair chassis” to “Front frame of wheelchair chassis”). The owner did not provide any
legislative basis (under s.66) for this request to be allowable. The Hearing Officer considered
the representations to show a wheelchair chassis, and not identify a front frame. The request
was deemed impermissible (under s.66(6)(a)), on the basis that the reference to the front
frame seeked to increase the scope of the registration by referring to a feature not seen in
the representations. The amendment, if made, would potentially make a front frame an
infringement (which would not have been the case before the amendment, considering the
representations).
s.66(6) superficially invites a ‘numerical’ comparison of the scope of the respective designs.
On such a basis, it might be argued that an amendment has the effect of replacing an entire
design with a different design is allowable – on the basis that the scope of the design has not
increased – it is merely different and less. However the concept of ‘scope’ does not admit of
a mathematical equivalence that would allow such a comparison. It may also be observed
that such an interpretation would not reflect the underlying intention of the Act, which is to
provide certainty on the monopoly right as from the date of registration.
The test is a notional test. It is not necessary to identify specific known things that would
become an infringement. Rather it is sufficient if you can hypothesise a product that would
not infringe pre-amendment, but would infringe post-amendment.
In applying this test, it is important to recognise that the Designs Act expressly relates the
criteria for infringement to that of distinctiveness – see s.71(9). Distinctiveness is based on
an assessment of overall impression as per s.16(2). It follows that any amendment that does
not affect the overall impression of the design cannot change what constitutes an
infringement. Consequently the criterion to be applied is:
•
does the amendment result in any change to the overall impression of the design;
and
•
if there is a change in overall impression, does that change make something an
infringement that would have not been an infringement before the amendment?
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D10.5 Allowability - increasing scope of the Design Registration
Amendments that do not change the overall impression are allowable under this criterion.
For example:
•
An amendment to the generic features of a product that does not affect the scope of
the product relating to the design, nor affect the overall appearance of the product
that arises as the result of the visual features, would be allowable.
•
An amendment to change a feature shown as a feature of the product, to a visual
feature of the design, would be allowable (assuming the scope of the product was not
expanded as a result).
•
Amendments of the representations to change how the design is represented –
without changing the detail of the design. For example, replacing plan views with
isometric views (or vice versa).
If an amendment would change the overall impression of the design, it will usually be the
case that the amendment will result in something that was not an infringement becoming an
infringement as a result of the amendment. However there are a small number of situations
where the overall impression may change, but the scope of the design has not increased.
For example:
•
An amendment that limits the products to which the design relates to a subset of the
former products.
Where a design relates to a common design, an amendment to delete one of the designs will
likely decrease the scope of the design, and be allowable. However the actual effect of the
amendment will need to be carefully considered having regard to the facts of the case.
Where the design relates to a complex product, with the registration being in respect of an
element of the complex product, it would be expected that an amendment to make the
design in respect of the whole product would be allowable under s.66(6)(a) – although the
facts would have to be carefully considered. However an amendment to change a design for
a complex product to a design for an element of that complex product would not be
allowable under most (if not all) circumstances.
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D10.6 Amendments of Statement of newness and distinctiveness
D10.6 Amendments of Statement of newness and
distinctiveness
The question of whether a Statement of Newness and Distinctiveness was considered in
Reckitt Benckiser Inc [2008] ADO 1. The situation may be summarised as follows:
•
Prior to registration, the Statement can be amended using s.28 – see para D10.2.2
above;
•
After registration, no amendment is possible. S.66 is not available, as the Statement
is not included on the Register [Reg 9.01(d)]. Furthermore the Statement is defined in
s.19 to be the statement as it existed at the time of registration – such that any
purported amendment would create text that was not the Statement of Newness and
Distinctiveness..
Some users have indicated a belief that the Statement should be amendable under s.66(6).
The following is provided to illustrate practical issues if such amendments were possible.
If amendments to the Statement were possible, the ability to amend under s.66 is limited.
The statements fall into three categories – see D04.6. Assuming the amendment relates to
material disclosed in the design application [such that s.66(6)(b) is complied with] the ability
to amend in compliance with s.66(6)(a) is likely to be as follows:
1.
2.
3.
Statements that indicate the visual features of the design relate to some only of those
listed in s.7(1)
•
An amendment to expand the list of visual feature categories is likely to be
allowable.
•
An amendment to exclude a category of visual feature is likely to be NOT allowable.
Statements that relate to all the features of the design:
•
An amendment to identify a feature that applies to all elements of the design is
likely to be allowable.
•
An amendment to delete a feature is likely to be NOT allowable, as the amendment
will increase the scope of the design registration by effectively removing that feature
as an element of the design.
Statements that relate to only some of the features of the design:
•
An amendment to add a statement identifying a feature is likely to be NOT
allowable. The effect of such a statement is to downgrade the significance of the
other elements in the design right – and therefore the scope of the design will have
increased.
•
An amendment to add a new element to an existing meaningful statement is likely
to be allowable. By adding new elements to the statement, the scope of the design
will be reduced.
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D10.6 Amendments of Statement of newness and distinctiveness
•
An amendment to delete an element from an existing meaningful statement is likely
to be NOT allowable. Given the existence of the Statement referring to other
features, the feature that has been deleted will have a downgraded significance in
the design right – and therefore the scope of the design will have increased.
•
An amendment to delete the Statement in its entirety is likely to be allowable – as
any downgrading of the significance of elements in the design will have been
removed.
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