Timely action is critical in patent prosecution, but lapses can occur due to errors, unforeseen circumstances, or procedural misunderstandings. Under section 223, the Patents Act 1990 provides mechanisms to seek extensions of time, allowing applicants to rectify missed deadlines in specific situations.
Section 223 is set out below:
223 Extensions of Time
(1) The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a) the Commissioner or a Deputy Commissioner; or
(b) an employee; or
(c) a person providing, or proposing to provide, services for the benefit of the Patent Office; or
(d) the receiving Office; or
(e) the International Bureau of the World Intellectual Property Organization.
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(2A) If:
(a) a relevant act that is required to be done within a certain time is not done within that time; and
(b) the Commissioner is satisfied, on the balance of probabilities, that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time;
the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.
(2B) An extension of time under subsection (2A) cannot exceed the period prescribed for the purposes of this subsection.
(3) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(3A) Despite subsection (3), the time allowed for doing a relevant act may be extended under subsection (2A) only after that time has expired.
(4) The Commissioner must advertise in the Official Journal:
(a) an application made for an extension of time for more than 3 months; or
(b) an application made for an extension of time for doing a prescribed relevant act in prescribed circumstances.
(6) Subject to subsection (6A), a person may, as prescribed, oppose the granting under subsection (2) or (2A) of the application.
Legal Basis for Extensions of Time
Under section 223(2) of the Patents Act 1990, extensions may be granted when an applicant fails to complete an act within the prescribed timeframe due to:
- An error or omission by the applicant, their agent, or their attorney; or
- Circumstances beyond the applicant’s control.
The Commissioner of Patents exercises discretion in granting extensions, assessing whether the requirements of the provision are satisfied.
Scope of Extensible Acts and Relevant Case Examples
Extensions of time apply to a range of patent-related actions, including:
- Filing complete applications following provisional applications – This can be critical when misunderstandings or professional advice lead to a failure to act. For example, in Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power [2020] APO 32, the applicants misunderstood legal advice and did not file a complete application within the prescribed timeframe. The extension was granted due to their reliance on professional guidance.
- Lodging divisional applications – Delays in identifying the need for a divisional application can be problematic. However, in Magnum Magnetics Corporation [2019] APO 3, the Patent Office refused an extension request to file a divisional application, as the delay was deemed avoidable.
- Paying renewal fees – Extensions are typically granted when the failure to pay is linked to administrative oversight rather than deliberate non-payment. A notable case is Nufarm Australia Limited v Advanta Seeds Pty Ltd [2023] APO 51, where the extension was granted due to an underpayment of renewal fees resulting from a calculation error and lack of proper verification. The decision reinforced the importance of providing a full and frank disclosure, showing that even in complex cases, if causative errors are identified, an extension may be allowed.
- Requesting examination – Delays in requesting examination can sometimes be extended if it is demonstrated that an administrative error led to the lapse. In Stephen Dall v Transpiro Pty Ltd [2023] APO 4, the opponent, a former director, controlled correspondence and failed to inform the applicant of critical deadlines. The Patent Office found that this omission justified an extension under section 223(2)(a), highlighting how external interference can warrant time relief.
- Filing evidence in opposition matters – Time extensions in opposition proceedings can be contentious, as seen in Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33, where the Patent Office allowed an extension to file a notice of opposition, given that immediate steps were taken to rectify the oversight.
- Applying for patent term extensions – Such extensions are rare and strictly scrutinized. In Amicus Therapeutics, Inc. [2020] APO 4, the applicant sought an extension to extend the grace period for filing a patent of addition application. The request was refused as the applicant failed to demonstrate a qualifying error or omission under section 223(2).
Discussion of Case Examples
While extensions of time are granted at the discretion of the Commissioner, case law offers useful guidance on the types of errors and omissions that qualify. Notably, the Patent Office only publishes decisions where an extension application has been opposed, meaning that these cases offer insight into the key issues assessed during review.
The decisions in Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64 and Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33 illustrate that proactive efforts to rectify an error improve the likelihood of success. However, cases such as Magnum Magnetics Corporation [2019] APO 3 underscore that preventable delays weaken an applicant’s position.
The case of Nufarm Australia Limited v Advanta Seeds Pty Ltd [2023] APO 51 further clarifies the requirement for causation in extension applications. The case involved an error in calculating and paying renewal fees, which resulted in the unintended cessation of a patent. Despite opposition, the Patent Office found that Advanta had provided full and frank disclosure, demonstrated a causal link between the error and the failure to act, and had acted diligently once the mistake was identified. This case underscores that procedural diligence, even after an error occurs, can strengthen the case for an extension.
Similarly, in Stephen Dall v Transpiro Pty Ltd [2023] APO 4, the Patent Office emphasized the importance of administrative control. Here, the opponent’s failure to pass on key correspondence led to a missed examination request deadline. The case highlights that an extension may be granted where an external party’s actions, rather than the applicant’s, are responsible for the delay. This ruling reinforces the necessity of maintaining procedural diligence even when a third party is involved in patent administration.
Key Considerations in Extension of Time Applications
When applying for an extension, applicants must provide evidence addressing the following factors:
- Nature of the Error or Omission
- Clearly identify the mistake or oversight that caused the deadline to be missed.
- Demonstrate that it was unintentional and not due to negligence or delay tactics.
- Causal Link to the Missed Deadline
- Establish that the error or omission was the direct cause of the failure to act.
- Ensure the failure to act was not a result of a post-deadline decision.
- Promptness in Seeking the Extension
- Applications should be made as soon as the error is identified.
- Any undue delay may weaken the case for an extension.
- Evidence and Supporting Declarations
- A declaration must be submitted by the individual responsible for the omission or the person with firsthand knowledge.
- The declaration should include a chronological summary of events leading to the error.
Procedural Aspects and Fees
- Applications must specify the missed action and the length of extension required.
- The cost is AUD 100 per month of extension, plus any applicable procedural fees.
- If documentation or fee payment is initially incomplete, the applicant is granted two months to submit missing materials.
- Failure to meet the extended timeframe may lead to refusal of the request.
Oppositions and Review Mechanisms
- If the extension sought exceeds three months, it is publicly advertised for two months to allow third-party opposition.
- If opposed, both parties can submit evidence, and a hearing may be conducted before the Patent Office.
Lessons from Case Law
Several rulings provide insights into successful extension applications:
- Full and frank disclosure is critical – applicants must be transparent about the circumstances surrounding the error.
- Establishing intent to comply with deadlines, or demonstrating that the error prevented the formation of such intent, strengthens the case.
- Acting promptly once an omission is identified is crucial to avoiding unnecessary delays that may jeopardise an extension request.
The Nufarm v Advanta case demonstrates that even in complex factual scenarios, when the applicant demonstrates procedural diligence and transparency, an extension may be granted despite opposition.
Conclusion
Extensions of time under Australian patent law serve as an essential safeguard for applicants who face genuine obstacles in meeting deadlines. However, successful applications require a compelling explanation, robust supporting evidence, and prompt corrective action. Understanding these principles, along with case law interpretations, can help applicants navigate the process effectively and preserve their rights within the patent system.
Stay tuned for our upcoming article on New Zealand extensions of time.
