Bringing designs back from the dead

Amendments to the Designs Act and Regulations on 19 April 2011 make it possible to restore an unintentionally lapsed design registration to the register. It is also now possible to restore an unintentionally abandoned design application.

The ability to restore abandoned applications and lapsed registrations will be of comfort to applicants and proprietors who, despite their intentions, did not comply with a deadline in time and later discover that their rights in the design have ceased.

Restoring an abandoned application

A design application is deemed to be abandoned if the applicant does not respond within the time set by the Intellectual Property Office to reply to objections about the registrability of the design.

Under the new provisions, an abandoned application will be restorable where:

• the Commissioner of Designs is satisfied that the default or neglect on the part of the applicant that resulted in the application being abandoned was unintentional; and
• a restoration request is made by the applicant within 3 months of the date on which the application is deemed to be abandoned (or further time if the Commissioner is satisfied that there was no undue delay in making the request).

Restoring a lapsed registration

The initial term of a registered design is 5 years from the date of registration. This term may be extended by two further periods of 5 years if a renewal fee is paid before the expiry of the unextended term. If the renewal fee is not paid in time, the registration will lapse and competitors are free to use the design.

Under the new provisions, a lapsed registration will be restorable where:

• the Commissioner of Designs is satisfied that the failure to pay the renewal fee in time was unintentional; and 
• a restoration request is made by the proprietor within 12 months of the date on which the registration lapsed (or further time if the Commissioner is satisfied that there was no undue delay in making the request).

Rights of third parties protected

If the Commissioner is satisfied that a prima facie case for restoration of an abandoned application or lapsed registration has been made out, the request will be advertised in the Patent Office Journal and third parties given an opportunity to oppose the restoration before it takes effect.

Additionally, any person who made use of the design, or took steps to do so, while the application was abandoned or the registration was lapsed, has certain continuing rights to use the design after its restoration.

Adrian Evans - April 2011.