Chapter 10 Amendments - IP Australiamanuals.ipaustralia.gov.au/designs/chapter_10.pdf · D10.6 Amendments of Statement of newness and distinctiveness..... 14. D10 Amendments. This

D10 Amendments

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 October 2016

1

Chapter 10 - Amendments

D10 Amendments


3

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

D10 Amendments


5

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.]

D10.1 Overview


6

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.

D10.2 Ambit of s.28 amendments


7

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.



8

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.



9

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).

D10.4 Allowabililty - inclusion of matter not in substance disclosed


10

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.

D10.4 Allowabililty - inclusion of matter not in substance disclosed


11

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.

D10.5 Allowability - increasing scope of the Design Registration


12

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?

D10.5 Allowability - increasing scope of the Design Registration


13

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.

D10.6 Amendments of Statement of newness and distinctiveness


14

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. 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.

2. 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.

3. 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.

D10.6 Amendments of Statement of newness and distinctiveness


15

• 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.

Documents

Chapter 10 Amendments - IP Australiamanuals.ipaustralia.gov.au/designs/chapter_10.pdf · D10.6 Amendments of Statement of newness and distinctiveness..... 14. D10 Amendments. This