Lapsed design applications likely to be restorable

A registered design protects the new appearance of an article, for example, the unique shape of a chair, from being copied for an initial term of five years. This initial term can be extended for two further periods of five years if a renewal fee is paid before the expiry of the unextended term. If the renewal fee is not paid in time, the design registration will lapse and competitors are free to apply the design to their own articles.

There is currently no provision in the Designs Act 1953 for a registered design to be restored to the register where the proprietor of the registered design intended to pay the renewal fee but, due to an error or oversight, did not pay the fee in time. The Regulatory Improvement Bill which had its first reading in Parliament on 5 May 2009 will insert provisions into the Designs Act that allow a lapsed design registration to be restored to the register where the proprietor establishes that the failure to pay the renewal fee in time was unintentional and either the request for restoration was made within a prescribed period or there has been no undue delay in making the request. This is consistent with similar provisions in the Patents Act 1953 which allow for the restoration of patents that have unintentionally lapsed.

During the select committee hearing on the Regulatory Improvement Bill the New Zealand Institute of Patent Attorneys made submissions asserting that a design application that lapses because the applicant did not respond within the time set by the Intellectual Property Office to respond to objections about the registrability of the design should be restored to the register where the applicant establishes that the failure to file a response in time was unintentional. This would be in keeping with provisions in the Patents Act that allow for the restoration of lapsed patent applications. The select committee agreed with the Institute’s submissions and stated at the hearing that lapsed design applications should be restorable to the register in a manner consistent with lapsed patent applications. The select committee has recommended to Parliament that the Regulatory Improvement Bill be amended to allow for the restoration of lapsed design applications.

The ability to restore registered designs and registered design applications to the register will be of comfort to applicants and proprietors who, despite their intentions, did not comply with a deadline. The possibility that a lapsed registered design or registered design application may be restored to the register should be taken into account by people searching the designs register in order to determine whether a registered design covers a product they wish to manufacture or sell. The amended Designs Act will give people an opportunity to oppose the restoration of a registered design or registered design application before the registered design or registered design application is restored.

Adrian Evans - October 2009.