Part D: The examination report and post-examination procedures
Includes time limits, examination and withdrawals.
13.01
As set out in DPN 02/2022, a period of two months will be allowed, under Rule 8, for the applicant to respond to and address the objection(s). This time period will apply to scenarios where:
- the design applied for fails to comply with the definition of a design as set out under Section 1(2)
- the design is dictated by technical function pursuant to Section 1(C)
- the design is contrary to accepted principles of morality and public policy
- the design incorporates protected flags and emblems pursuant to Schedule A1
13.02
As set out in DPN 02/2022, a period of two months will be allowed under Rule 8 for the applicant to respond to and address the objections.
Under Rule 9(2), three months are allowed for the applicant to address any issues raised by the examiner in the examination report where the representations supplied are not suitable for publication. However, where an application is subject to both a substantive objection and, where the representations are not suitable for publication, new representations will only be requested (and the period of three months for response set) once any substantive objections are fully resolved. This is in line with Rule 9(1).
13.03
Time limits for section 3(5) and 3B RDA are outlined in Rule 10:-
| Rule 10 states : |
| The time prescribed for the purposes of section 3 (5) shall be 12 months beginning with the date on which the application for registration of the design was made or treated as made (disregarding section 14). The period prescribed for the purposes of section 3 B (3) shall be the period of 2 months beginning with the date on which the earlier application was modified under section 3 B (3). |
13.04
Although Rule 39 does not set any limits on the number of time extensions that may be granted during the prosecution of an application, examiners will seek to resolve outstanding issues as quickly as possible - ideally allowing one single time extension but no more. Multiple requests will be refused unless accompanied by persuasive and substantive reasons as to why further time is required.
13.05
In respect of deferred applications, requests for additional time which extend beyond the period in which a request for publication can be made will not be permitted, as set out in Section 3(5) RDA and Rule 10(1).
13.06
Where an examiner has raised an objection in respect of either a formalities or a substantive issue, the applicant will be informed in writing (via the Examination Report). The report will provide details of the relevant section(s) of the RDA and/or Rules which apply. Each report will set out the reasoning behind the refusal and provide the applicant with a period in which to respond. The applicant may, before expiry of that period, provide submissions in writing in order to persuade the Registrar that the objection should be waived.
13.07
If the examiner is minded to maintain the objection and refuse the application, the applicant will be given the opportunity to request an ex parte hearing before a senior representative of the Registrar. If the objection is waived at hearing, the application will proceed to registration once all other requirements have been met (as would be the case when routinely dealing with an Examiner). Regardless of whether the objection is waived or maintained at hearing, the Hearing Officer will, on completion of the hearing, produce a ‘Hearing Report’ which summarises the arguments and submissions presented by the applicant or representative, and which also provides reasoning for the Hearing Officer’s decision (to either maintain the objection or accept the design for registration).
13.08
Failure to address an outstanding objection (whether at the examination or ex parte hearing stage) will ultimately lead to refusal of the application. If an applicant is not satisfied with the Registrar’s decision to refuse an application, he or she may request a full statement of grounds by submitting a completed Form DF5 within one month of the date of refusal (that is the date on which the Examiner’s letter of refusal was issued).
13.09
If the applicant remains dissatisfied with the Registrar’s reasons for refusing (as set out in the Statement of Grounds), they may appeal - either to a person appointed by the Lord Chancellor (‘the Appointed Person’), or to the Courts. For appeals to the Appointed Person, the applicant must submit a completed Form DF55 within twenty-eight days of the date of the Registrar’s written decision. The applicant should note that, unlike legal challenge through the Courts, an appeal to the Appointed Person is final.
13.10
Prior to registration, the applicant can withdraw their application at any time. In the case of multiple applications, one can withdraw either all or some of the designs contained therein. On receipt of a written request to formally withdraw an application, the examiner will send the applicant or agent a letter confirming that the request has been actioned.
Withdrawal will take effect from when a withdrawal request is actioned. If a registration is granted before a withdrawal request is actioned it will not be possible to reverse the registration. Therefore, you should title your request “Withdrawal Request”, label it as urgent, and send it to us as soon as possible.
As a request for withdrawal cannot be acted upon once a design is registered, a registered proprietor, or their appointed representative can request that the registration is cancelled via a form DF19C. Where the design is cancelled after registration, details of the case will remain open to inspection in line with section 22 of the RDA.