In recent weeks, we’ve been following progress on New Zealand’s proposed second-tier “Advancement” patent with interest. As we moved from first, to second and then third updates, optimism that New Zealand’s patent system would be tweaked in favour of “the little guy” quickly waned; it became apparent that support for the Bill (Patents (Advancement Patents) Amendment Bill 2018) was divided along party lines – and that the majority were quite strongly opposed to it.

First reading concludes and the news is all bad

On 8 August 2018, the Bill’s first reading was concluded – and it was voted upon.  As predicted, there were 57 “Ayes” and 63 “Noes”.  The notion of a second-tier New Zealand patent system – at least in the form proposed by the draft legislation, is now dead in the water.

Could this influence what happens with Australia’s “Innovation” patent?

We are disappointed by this outcome and feel as though it’s a case of “opportunity missed” for the New Zealand patent system.  Whether the failure of the Bill at all influences the future of the counterpart “Innovation” patent system in Australia remains to be seen.  As readers will know from our previous update, this has now returned to death row where its fate will doubtless be revealed over the next few months.

As always, we’ll keep readers updated.

Authored by Gareth Dixon, PhD

In recent years, IP “buzzwords” have included superconductors, gene patents, business methods and computer software. Society’s ever-increasing environmental awareness now dictates that “cleantech” is the latest vogue. The Australian Patent Office offers the facility to request expedited examination of any patent application if the applicant provides good reason (this may be as vague as “commercialisation”). However, the Office singles out cleantech-related applications by not requiring a reason other than that the invention is in the (somewhat imperfectly-defined) area of “green [clean] technology (climate ready)” research. In this article, we consider some of the pros and cons of proceeding toward accelerated patent grant in Australia for cleantech inventions.

Cleantech and the “patent bargain”

Unlike gene patents, business methods and computer software (each of which have been uniquely polarising) there is a general acceptance that clean technologies should be patentable.  The few dissenters who argue that such technologies should be in the public domain appear to overlook the basic quid pro quo of the “patent bargain” – being that without the prospect of patent protection, researchers would have no incentive to develop such technologies in the first place.  In this respect, any patentability issues surrounding clean technologies are more closely akin to those experienced a quarter century ago in relation to superconductors – in other words, how can the patent system be poked and prodded in order to better accommodate these technologies?

How clean is “clean”?

Any special treatment for clean technologies of course first requires a standard definition of precisely how “clean” (or “green”) any new technology must be in order to qualify.  On the one hand, a technology that potentially mitigates an environmental problem or provides a solution sets the bar rather high – and excludes “net-red-relative-green” technologies that although “cleaner” than existing competitor technologies, may still cause some degree of environmental damage.  On the other hand, it could be argued that these technologies (for instance, a more environmentally-friendly method for manufacturing cement) are just as deserving.  Accordingly, at least in the patent world, the term “cleantech” appears to be interpreted fairly broadly.

Expedited examination for cleantech applications in Australia

Notwithstanding any posturing as to what is or isn’t properly “cleantech”, the Australian Patent Office offers to expedite the examination of patent applications on the grounds that it relates to clean technologies.  Of itself, this is nothing new – indeed, expedited examination has been offered for many years, irrespective of technology.  However, as a reason must by given in order to have examination expedited, this platform has largely been the domain of applicants wishing to expedite grant of their application with a view to commencing infringement proceedings as soon as possible thereafter – or those requiring a granted patent as a condition of obtaining investor funding.  At present throughputs, expedited examination typically saves the applicant around 12 months of waiting for a first examination report to issue – and the potential benefits are clear in this regard.  As such, literally checking a box asserting that an application relates to clean technology will be just as valid any reason typically employed in the past.  The Office then makes a fairly subjective assessment as to whether the technology is clean enough to qualify under the scheme.

On the other hand…

On the other hand, proceeding in the “regular” manner and not applying for expedited examination provides an applicant with additional time in which to determine whether their invention is commercially viable; this is important on a cost-basis given that a decision to proceed with patent prosecution is sometimes akin to a “commitment to pay”.  Of course, as with everything in the patent game, how best to proceed is a delicate balancing act and will vary from applicant to applicant, technology to technology.

Claim scope and eventual validity

Another feature that must be considered when deciding whether to request expedited examination of a cleantech patent application – especially in Australia, relates to claim scope.  Australian patent examiners frequently draw upon the prosecution history of any US or EP counterpart applications.  Accordingly, there is the potential to obtain relatively broad coverage in Australia by first requesting expedited examination – and relying on the possibility that the corresponding US/EP prosecutions are not yet significantly advanced.  Of course, this must be counterbalanced against the likelihood – and with it, expense, of later needing to file post-acceptance voluntary amendments to the Australian claims in order to keep them “valid” in view of prior art later uncovered elsewhere.  The facility to file divisional patent applications is another means of maintaining pendency, and with it, flexibility.

The international picture

Australia is not the only country to offer expedited examination for cleantech patent applications – indeed, the United Kingdom, United States, South Korea, Japan, China, Israel and Canada (amongst others) offer (or have offered in the recent past) such a platform.  Although the respective rules and eligibility criteria may be slightly different from those of Australia, the above-noted “pros and cons” are just as applicable in an international context.

There is evidence – both anecdotal and tangible, that patent applicants are making good use of the expedited examination platform.  For instance, the United Kingdom Intellectual Property Office has granted well over 100 patents under the Clean Channel Patent Examination Acceleration scheme, which is purported to reduce the average pendency of a UK patent application from around 36 months to less than eight.

Furthermore, in 2013, the International Centre for Trade and Sustainable Development published an empirical analysis of several fast-track examination programs. It concluded that such platforms for cleantech applications reduced the average grant time of a patent by up to 75%.  It further concluded there was strong demand for such programs, especially from SMEs, and that fast-tracked patents were of good commercial value.

Cleantech and the Patent Prosecution Highway

Another way in which expedited examination of cleantech patents may be attractive is that it allows applicants to take advantage of the various Patent Prosecution Highway (“PPH”) agreements that exist between certain countries.  For instance, one may look to invoke the AU-US PPH by using a quickly-granted Australian cleantech patent as the basis for expedited examination in the USPTO.  However, anecdotal evidence suggests that proceeding via the dedicated route for cleantech patents is likely to be the quicker option.  Nonetheless, the various PPH mechanisms remain useful supplementary options for the expeditious grant of a cleantech patent in certain foreign jurisdictions.

Shelston IP’s cleantech team

In response to the increasing recognition being afforded to clean technologies throughout the patent world, Shelston IP has in place a “Cleantech IP Team” comprising professional staff from varying scientific, engineering and legal backgrounds.  We are well placed to advise clients as to how best to prosecute their clean technologies by making best use of the various facilities available under the Australian and international patent systems.

Authored by Gareth Dixon, PhD

The management of patent deadlines is a persistent consideration in the IP world, with the consequences of missing one potentially being the irreversible loss of patent rights. Fortunately, New Zealand legislation provides for the extension of some of these deadlines (including acceptance, but excluding divisional deadlines). In our recent experience, IPONZ has been generally understanding in considering and granting these extensions of time. However, it is important for both Attorneys and Applicants to understand the statutory basis by which these decisions are made, and how best to approach requesting these extensions of time.

Introduction

It is generally accepted that deadlines are important tools in our commercial world. Whether we like them or not, deadlines drive both our professional and personal decisions, and assist businesses in allocating appropriate resources at opportune times.

However, to err is human, and circumstances may arise which can result in missed deadlines. The consequences of missed deadlines can be particularly problematic in the patent world, potentially leading to the irreversible loss of patent rights.

Fortunately, there exist provisions in both Australian and New Zealand to request an extension of time for doing certain actions if the deadline to do that action has passed.

This article relates particularly to New Zealand extensions of time in accordance with section 231 of New Zealand’s Patents Act 2013, and continues in-part from my Colleagues’ article in relation to Australian extensions of time.

Section 231: Commissioner may extend time limits for certain filing requirements or for delivery failures

Section 231 of New Zealand’s Patents Act 2013 outlines the rules under which an extension of time may be requested, considered, and allowed/refused:

231 Commissioner may extend time limits for certain filing requirements or for delivery failures

(1) The Commissioner may, on application by any person under section 232 or at the Commissioner’s own discretion, extend—

(a)        the time limit under section 37(2)(a) or (b) (which relates to the time limit for the filing of a complete specification) or section 53 (which relates to the filing of a convention application); or

(b)        the time within which anything must be done under this Act or the regulations if that thing is not or will not be done in time because of a failure or delay of the delivery method.

(2) The Commissioner may grant the extension even if the time has expired for doing the thing.

In sum, subsections 1 and 2 indicate the circumstances under which  any person (including the Commissioner) may request the extension of time.  The Commissioner may grant the extension even if the relevant deadline has passed. The request must be accompanied with an explanation of any reasons for failing to comply with the original time limit, and optionally (although, in practice, conventionally) evidence in support of the request.[1]

The contents of these subsections are largely unsurprising and are comparable to Australian practice. However, subsections 3–4 differ significantly in both language and potential application, as discussed below.

Subsection (3)

(3) However, the Commissioner must refuse to grant the extension if in his or her opinion

(a)        the applicant or the applicant’s agent has not allowed a reasonable margin of time for the delivery of any documents or information relating to the matter for which the application for the extension is made; or

(b)        the applicant or the applicant’s agent has in any other way failed to act with due diligence and prudence on the matter; or

(c)        there has been undue delay in applying for the extension of time or in prosecuting the application.

This subsection notably relates to three subjective negative qualifiers, dependent on the Commissioner’s interpretation of the circumstances of the missed deadline.

On reviewing the Official documentation and published case law (which has been quite limited), we have been unable to find a conclusive definition of what would constitute a “reasonable margin of time” or an “undue delay”. Accordingly, it appears that the Commissioner has the power to determine the application of these terms, and the Applicant or relevant person is provided minimal basis on which to challenge the Commissioner’s decision.

Our best understanding of “due diligence and prudence” is found in IPONZ’s commentary to the PCT Union,[2] in which the term is defined as the “rightful, earnest and constant effort and caution with regard to practical matters”. While this provides some direction, we again note that there is no indication or example of what a “rightful” or “earnest” effort comprises, and hence the power remains with the Commissioner.

(It is noted that these comments were made with regards to the old Patents Act 1953, however the language of the relevant subsection[3] was not significantly amended in the transition to the new Patents Act 2013.)

Subsection (4)

(4) The Commissioner may grant the extension on any terms or conditions he or she thinks fit.

This subsection is relatively straightforward and operates as a catch-all for the reasonable reasons in which an extension of time should be granted (subject to the above qualifiers) – however, it is noted that the wording implicitly allows the Commissioner to also deny the extension for any reason they see fit.

It may also surprise some practitioners and patent applicants to note that section 231 fails to include an “error or omission” or an “unintentionality” clause – however, in practice, this reasoning may be considered in subsection 4 (if the Commissioner wishes to apply it in this manner).

Application of Section 231

While the language of section 231(3)–(4) appears to be one-sided in permitting the Commissioner to allow or deny extensions of time at will (particularly in comparison to Australian practice), we have found in recent experience that IPONZ has been rather lenient in considering the above-discussed factors under section 231, such that we have been receiving decisions similar to those issued by the Australian Patent Office.

This may be due to New Zealand’s status as a strong net importer of IP, and as such New Zealand has a vested interest in being as lenient as reasonably possible with respect to the granting of a requested extension of time. Literal or undue adherence to the strict wording of section 231 effectively discourages foreign investment in New Zealand’s patent system – and as such, some degree of purposive interpretation is expected, and generally delivered, on the part of IPONZ.

Summary

It is important for any practitioner or patent applicant to note the differences between Australian and New Zealand practice, and to tailor their request for an extension of time accordingly. In New Zealand, requests for an extension of time are available for some (not all) deadlines, and the focus of such a request should be on demonstrating “due diligence and prudence” in efforts to meet the original deadline.  There should be less reliance on identifying an “error or omission”  on the part of the Applicant or their agent (as is commonly the case in Australia).

Moreover, despite the subjective wording of the legislation and New Zealand’s vested interest in making its patent system as user-friendly as possible, we stress that extensions of time should only be relied upon as a last resort – the first option should always be to meet the original deadline.


[1] Patent Regulations 2014 (NZ) s 146(1).

[2] PCT Union, PCT/R/WG/4/1 ADD.1 to the World Intellectual Property Organization, Application of the Criteria of “Due Care” and “Unintentionality” under National Practice in Cases of Restoration of Rights: Replies Received in Response to Questionnaire, 19-23 May 2003 (http://www.wipo.int/meetings/en/details.jsp?meeting_id=4817).

[3] Patents Act 1953 (NZ) s 93A(3).

Authored by Gareth Dixon, PhD

A New Zealand Government review concluded more than 16 months ago under which the facility to “daisy chain” divisionals from applications proceeding under the Patents Act 1953 was squarely under threat.  Nothing of significance appears to have happened in the interim – at least publicly, and one assumes the Government (which, of course, changed following the general election of September 2017) is carefully considering the feedback it received from stakeholders.  Notwithstanding, there remains a rather short-priced favourite outcome in which certain changes to New Zealand divisional practice are likely, if not inevitable.

“Old Act”, “new Act” and “daisy chaining”

New Zealand patent applications are presently binary.  They are either what we term an “old Act” case (subject to the Patents Act 1953 throughout its lifecycle), or a “new Act” case (subject to the Patents Act 2013).  The critical date here was 13 September 2014, which corresponds to the date of commencement of the new Act – an application for which a complete specification was filed in IPONZ prior to this date is an “old Act case”; and an application filed on or after this date is a “new Act case”.

The one exception to this rule arises with respect to divisional applications.  A divisional filed from an old Act case proceeds as an old Act case, irrespective of whether it was filed before, on, or after  the date of commencement.  Availing of this facility is advantageous in two main respects: a) the patentability criteria prescribed under the old Act are perceptibly softer; and b) the “daisy-chaining” of old Act divisionals is not restricted, meaning that in theory, one can keep the subject matter of a patent application pending throughout its 20-year lifecycle.

Unsurprisingly, a divisional filed from a new Act case will itself proceed as a new Act case.  The new Act prescribes not only higher patentability standards, but also limits the period that examination can be requested on a new Act divisional to five years from the filing date of the original “parent” application (you can still daisy-chain new Act divisionals beyond 5 years, you just can’t request examination of them – cue the term “zombie divisional”).

As such, from a patentee’s perspective, it is clearly advantageous for a divisional to proceed as an old Act case, if possible – lower patentability standards and the facility to daisy chain for 20 years make this statement fairly uncontroversial.  Indeed, this was identified in our earlier article as one of the main incentives for bringing forward the filing of a New Zealand patent application to before the date of commencement (i.e., to capture an application as an old Act case).

Government review – completed October 2016

New Zealand’s Ministry of Business, Innovation and Employment (“MBIE”) published a paper entitled “Divisional patent applications: Possible changes to the transitional provisions in section 258 of the Patents Act 2013”.  Public submissions from interested stakeholders closed Friday, 14 October 2016.

As stated in the paper, the purpose of the review was to:

..seek feedback on whether or not the transitional provisions in section 258 of the Patents Act 2013 (“the 2013 Act”) relating to divisional patent applications should be amended to limit when divisional applications can be filed or examined under the Patents Act 1953 (“the 1953 Act”), and if so, what those amendments should be. 

In other words, there was a recognition on the Government’s part that the transitional provisions, as they stand, could give rise to certain unintended consequences.  Specifically, it is plausible that we could still have the last of the old Act divisionals pending in the year 2033.  The question, therefore, was whether the transitional provisions attached to the Patents Act 2013 were consistent with the policy intent underpinning such legislation.

Policy intent of the Patents Act 2013

Paraphrased heavily, the policy intent of the Patents Act 2013 could be summarised as, on the one hand, a recognition that the primary users (patentees) of the New Zealand patent system are foreigners – and on the other hand, that those principally encumbered by thickets of broad patents (as were achievable under the old Act) are locals (third parties).  The new Act thereby sought to redress any imbalance – be it real or perceived – in favour of third parties.

Hand-in-hand with this broad policy objective came the realisation that the facility to daisy chain old Act divisionals indefinitely (of course, not beyond the 20 year patent term) created an undue burden on third parties.  Whether a patent applicant intent on maintaining pendency (and thereby uncertainty on the part of competitors looking to enter the market) for a period of two decades was abusing, or merely making use of the system is immaterial – the point is that with this possibility came a perception on the part of the New Zealand Government that third parties were being commercially “paralysed” in the interim.  In general, locals could not afford to do battle with foreign corporations during opposition or revocation proceedings – and the facility to daisy chain divisionals indefinitely meant that even if they could (and assuming that they won), the next generation divisional/s may effectively block them for the entire 20-year patent term.

Of course, the above is an extreme/unlikely scenario.  However, it nonetheless exists as defining the practical limits to which the present transitional provisions could be worked in favour of the patentee – and this has been identified as potentially contrary to the spirit of the new legislation.

Proposals under the review

The review put forward three main proposals:

  1. Do nothing/maintain the status quo. This option would likely prevail in the event that public submissions failed to identify indefinite daisy chaining as being an issue.
  2. Establish a final date by which no further old Act divisionals may be filed. This option arguably goes too far in respect of removing certainty for patentees (taking away their right to file a divisional) and may be inconsistent with New Zealand’s international obligations (Paris Convention, Articles 4G(1) and 4G(2)).
  3. Establish a date after which any divisional filed from an old Act case will proceed under the new Act. This was MBIE’s preferred option having regard to the competing factors identified above.

Is indefinite daisy chaining actually an issue?

The review identified that as of mid-July 2016, there were still 3054 pending applications made under the old Act.  Of these, more than half (1693) were divisionals.  Further, 661 of the 1693 divisionals were “first generation” divisionals (divided from applications that are not themselves divisional applications); 691 of the 1693 were “second generation” divisionals (divided from applications that are first generation divisionals) and 341 were “third generation” divisionals, divided out of second generation divisionals.

The data thereby show that whilst the practice of daisy chaining is indeed being followed, there is a drop-off from second to third generation (and likely beyond).  This is unsurprising – and suggests that in the extreme situation whereby old Act divisionals could conceivably still be pending in 2033, it is highly unlikely that there would be more than “a handful” of such applications.  This, itself, is somewhat self-evident even in the absence of any data.  However, the issue at hand for MBIE in conducting this review was whether the mere facility to have old Act divisionals still pending in 2033 was contrary to the policy underpinning the new Act.  To this end, there were also significant implications for IPONZ:

The effect of this is that the Intellectual Property Office of New Zealand (“IPONZ”) must maintain the capacity to examine 1953 Act divisional applications potentially for up to twenty years after entry into force of the 2013 Act. This requirement would mean examiners would need to be trained to examine applications under both Acts until at least the early 2030s. This imposes additional costs and complexity for IPONZ which may mean that IPONZ fees may be higher than might otherwise be the case. 

One could suspect, on the basis of the data presented, the longer-term implications for IPONZ and the over-arching policy incentive to promote the interests of third parties that a significant “issue” will have been raised via the public submission process (submissions have not been made public).  In such circumstances, the status quo is unlikely to prevail and options 2 and 3 (of which the latter is the only reasonable option for the reasons provided above) may come to be considered in greater depth at Government level.  That is, after a certain to-be-determined date, a divisional filed from an old Act case will proceed as a new Act case, subject to (amongst other restrictions) the five year limit on daisy chaining identified above.

A hypothetical example

Should “option 3” prevail, as expected, the following is an example of how the amendments may work in practice:

The sunset date is set at 1 January 2019 – that is, a divisional filed from an old Act case after this date will proceed as a new Act case.  Hypothetical application NZ ‘777 is an old Act case having a filing date of 1 July 2015; it is still pending, which means a divisional may still be filed from it.  If that divisional (NZ ‘888) is filed pre-1 January 2019, it will proceed as an old Act case.  However, if it is filed post-1 January 2019, it will not only proceed as a new Act case, but its examination will need to be requested no later than 1 July 2020.  Finally, for the sake of appearances, any further divisional filed from NZ ‘888 after 1 July 2020 would be a “zombie divisional” – a feature of the register, but neither dead nor alive because the deadline for requesting examination would have passed already.    

The IP Omnibus Bill 2018

It is expected that a consultation document toward an “IP Omnibus” Bill will be released within the next few months.  This will expectably cover issues such as the present review, other proposed amendments to the Act and Regulations, New Zealand’s participation (from an IP perspective) in the CPTPP, trade mark issues, designs issues and so forth.  Coordinating each of these timelines so that all matters can be addressed within the single document may set its release back a little.  Irrespective, we understand that this will be the medium through which the divisional issue is to be progressed.

Conclusion

We are presently less than 3½ years into the new Act – and as such, any major issues relating to daisy chaining (of the type identified above) are yet to be encountered in practice.  That said, the Government review was predicated largely on preventing any such issues before such time as they manifested in day-to-day New Zealand practice.  In that sense, there was a certain inevitability to this review, given that the daisy chaining facility had been identified as a possible unintended loophole almost immediately upon release of the final text of the new Act.

All things considered, we suspect that a lethal dose of glyphosate is soon to be poured on the facility to daisy chain old Act divisional applications indefinitely.

Shelston IP’s New Zealand practice

All of Shelston IP’s patent attorneys are registered to practise on both sides of the Tasman and would be pleased to assist with any queries relating to either Australian or New Zealand patent law.

Authored by Gareth Dixon, PhD

Changes to the Common Regulations approved in October 2016 by the Madrid Union, which are due to come into force on 1 February 2019 relate to the filing of divisional applications based on International Registrations.

At the present point in time, it is possible for parties filing domestic Australian trade mark applications to file divisional applications.  However, it is not possible for a party who has filed an International Registration designating Australia (IRDA.), to file a divisional application on the basis of that IRDA. Following changes to the Common Regulations, Australia will have an obligation under its international commitments to permit the filing of divisional applications based on IRDAs.

As a consequence, a discussion paper has been released concerning proposed amendments to Australia’s legislation. The discussion paper deals with:

  • proposed allowance of divisional applications based on IRDAs and amendments relating to divisional applications filed on the basis of domestic applications; and
  • the possibility of permitting divided applications to be merged back into their parent resulting in a single application or registration.

At present, the filing of domestic divisional applications can be used by applicants to extend the life of their application indefinitely.  This avoids the ongoing official fees associated with obtaining extensions of time, and the risk of potential refusal. Under Australian legislation, a divisional application can be filed for some of the goods and/or services specified in the parent application and the new divisional application has the same time period for responding to the Examiner’s objections as a new application. As 15 months is allowed for applicants to overcome objections, filing a divisional application allows a significant extension to the life of an application and can be more cost effective than seeking extensions of time. Further, it is possible for applicants to file divisional applications based on divisional applications, and retain the priority date of the original parent.

Under the proposed amended legislation, a divisional application of either a domestic application or an IRDA would have the same status as the parent application. In other words, the existing objections to registration would apply and the deadline for acceptance would be the same as the deadline of the parent application. This would remove the advantage sometimes obtained by filing a divisional of a domestic application, which effectively defers the acceptance deadline by more than 15 months.

Divisional applications need to ensure that goods and/or services in the divisional application are excluded from the parent application. In the past, this has caused difficulties for some applicants in construing the scope of descriptions used in the parent and proposed divisional application, even though the problem of overlap should be fairly readily avoided where suitable care is taken.  IP Australia is considering ways to simplify the process so as to reduce the difficulties encountered by some.

At the present time, IP Australia is calling for submissions so as to undertake further consultation with a view to assessing the benefits and costs, and any potential problematic scenarios that may arise from the proposed changes to its processes for dealing with divisional applications.

Although changes to the Common Regulations will allow the holder of a divisional of an International Registration to request that it be merged with its parent, this only applies to countries that currently allow this for domestic applications.  As it is not offered in respect of Australian domestic local applications, Australia has no obligation to offer this option.

While not obliged to change our legislation, IP Australia accepts that there may be some benefits to portfolio management from the merging of divisional and parent applications or registrations, although it has doubts as to whether this is something that would be widely used by applicants. Consequently, it has invited feedback from stakeholders on this issue, and will consider any other observations stakeholders wish to make.

This article by Shelston IP Principal, Sean McManis, first appeared in World Trademark Review, October 2017.

Authored by Sean McManis

In some jurisdictions, patent prosecution deadlines and deadlines for payment of maintenance fees (sometimes called renewal fees) are a “life and death” issue and missing a deadline can be fatal, resulting in the irretrievable loss of rights.  Australia, however, has a more lenient approach and the legislation very generously provides for extensions of time, affording the opportunity to rectify the situation when a deadline is missed.  In order to be successful, however, a request for an extension of time must be made under the appropriate section of the Patents Act 1990 and certain criteria must be met.  This article discusses the relevant sections of the Act and the requirements for obtaining an extension of time in Australia.  It may be used as a guide by Applicants, Patentees, Opponents and Attorneys.

Introduction

Despite the best efforts of Patent Applicants, Patentees and their Attorneys, on rare occasions, deadlines for undertaking certain actions are missed.  In some instances, the rights of an Applicant are not significantly affected.  For example, missing the deadline for requesting international preliminary examination of a PCT application does not result in any loss of rights in relation to, for example, entering national phase based on the PCT application.  In some instances, however, missing a deadline can have serious ramifications and can lead to the unintentional loss of patent rights.

The terminology for the relevant legal remedies in different jurisdictions varies and includes, for example, re-instatement, re-establishment, restoration, restitutio in integrum and revival.  In Australia, rights can be restored by obtaining an “extension of time” to carry out the relevant “act” that needed to be undertaken by the (missed) deadline.  The Patents Act 1990 includes the following provisions relating to an extension of time when a necessary action is not carried out in time in spite of due care having been taken, as well as in the event of an error or omission and certain circumstances beyond the control of the relevant person:

1.       Extension of time under s 223(2A): “due care”

s 223(2A) of the Patents Act 1990 relates to “due care” and reads as follows:

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.”

However, this section of the Patents Act is regarded as relatively strict and is rarely relied upon.  Consequently there is little case law regarding its interpretation.

Time limit (s 223 (2A))

The prescribed time limit for making an application for an extension of time under s 223(2A) is 2 months after the circumstance that prevented the person from doing the relevant act within the time required ceases to exist.[i]  The extension of time cannot exceed 12 months.[ii]

The person concerned (s 223(2A))

An extension of time under s 223(2A) can be requested by the person concerned. s 223(2A) does not refer to the Applicant or Proprietor.  In fact, an Opponent can request an extension under s 223(2A), including (during a short window of opportunity) in respect of the time limit for filing a notice of opposition.

Due care

s 223(2A) uses the wording “due care”.  There is an absence of case law on the threshold for “due care” in Australia but comments have been provided in obiter in cases relating to extensions of time under s 223(2).  In this respect, perhaps surprisingly, it has been suggested that “failure to exercise due diligence” would meet the Australian “due care” requirement.[iii]  The absence of any intention to take the relevant action was, however, considered inconsistent with the requirement for “due care”.[iv]

The Australian Patent Office Manual of Practice and Procedure (often referred to as the Patent Examiners Manual) suggests that the person concerned would need to have had appropriate systems in place and to have done everything that could reasonably be expected to ensure that the relevant act was done.[v]

It’s also worth mentioning that the required standard of proof for due care under s 223(2A) is “the balance of probabilities”.[vi]

2.       Extension of time under s 223(2): “error, omission or circumstances beyond control”

Far more commonly used in Australia is s 223(2), for which the threshold is rather more lenient.  s 223(2) of the Patents Act 1990 is as follows:

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.”

Note that the language “may” in s 223(2) is distinct from “must” in s 223(2A), i.e. for applications under s 223(2) the Commissioner has discretion to allow or refuse an extension.

Time limit (s 223 (2))

For an application for an extension of time under s 223(2)[vii] in Australia, no time limit is prescribed for making the application for an extension of time.  This absence of a time limit is in stark contrast to s 223(2A), for which the maximum time limit is 1 year from expiry of the unobserved time limit.

The person concerned (s 223(2))

Like s 223(2A), s 223(2) refers to the person concerned.  The “person concerned” indicates only the person in whose name the relevant step is to be taken or act done.  It is not limited to the Applicant or Proprietor – i.e. can include an Opponent but not an unrecorded Assignee – and does not include the Agent or Attorney except in the context of circumstances beyond control (s 223(2)(b)).

Error or omission

Fortunately, it tends to be relatively easy to meet the requirement of s 223(2)(a) for an “error or omission” and persuade the Commissioner to grant an extension of time in Australia.  The “error or omission” requirement is understood broadly and includes, for instance, a lapse of memory or a failure to keep appropriate records, a failure of a person to follow their normal practice,[viii] important information being overlooked[ix] and a mistaken conclusion about the implications of the law.[x]

Circumstances beyond control

Section 223(2)(b) is a “force majeure” provision.[xi]  Indeed, the language of s 223(2)(b) implies an element of unforseeability which is inconsistent with delays that could have been anticipated and circumvented.[xii]  This includes postal delays and can include sickness or an accident, for example if an Applicant prosecuting his/her own application becomes ill and is unable to rely on another person to carry out the relevant act.[xiii]  However, bankruptcy and lack of funds are not considered to be circumstances beyond a person’s control.

Discretion

s 223 is beneficial in nature and should be applied as such.[xiv]  Therefore, although an element of discretion is involved in the context of s 223(2), in practice, the Commissioner tends to be fairly liberal regarding willingness to grant extensions of time.

The Commissioner must be satisfied that a relevant error or omission occurred, but it is not necessary to provide an explanation for why it occurred.  In this regard, it is considered more important to take into account the consequences of extending or refusing to extend the time rather than to debate the reasons why the act was not done in time.[xv]  Nonetheless, the party applying for the extension of time must make a “prompt, frank, comprehensive and clear” disclosure of all the circumstances relating to the decision about whether or not the Commissioner’s discretion should be exercised.[xvi]

Relevant considerations taken into account will depend on the specific facts.  However, there are strong reasons for granting an extension when “errors and omissions are made against a clearly demonstrated desire [to do whatever it was that needed to be done], and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt”.[xvii]

For the best chance of securing an extension of time under s 223(2), an extension of time should be requested as soon as possible after the failure to do an act is noticed.  Significant delay would likely be frowned upon and could jeopardise the chance of an extension being granted.

The causal link

s 223(2) uses the language “because of” which indicates a causal link between the error or omission or circumstances beyond the person’s control and the failure to an act within a time limit.  In the majority of cases, it must be demonstrated that the error or omission caused the failure.[xviii]  However, an error or omission which contributes to cause the failure to perform the relevant act can also be sufficient.[xix]

3.            Error or omission by the Office (s 223(1))

Interestingly, s 223(1) provides for extensions of time for doing a relevant act if a deadline is missed because of an error or omission by: (a) the Commissioner or a Deputy Commissioner; or (b) an employee; or (ba) a New Zealand delegate; 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 WIPO.  This primarily includes circumstances related to the acceptance deadline, such as a failure to forward a response to an Examiner if a response was received by the office a week before the final date for acceptance.  Another example would be if the Applicant receives incorrect advice from the Commissioner, despite having provided all relevant information or having provided sufficient information for the Commissioner to realise that further information was required before providing the advice, and the Applicant acting on that wrong advice resulting in missing the deadline.[xx]

Are there circumstances where the ability to obtain an extension of time in Australia might surprise foreign attorneys?

Yes.

Taking Europe as the example, re-establishment in Europe is not available in relation to filing a divisional application[xxi] whereas it is possible to secure an extension of time for filing a divisional application in Australia.

It’s also possible to secure an extension of time for filing a notice of opposition at IP Australia but not at the EPO.[xxii]  However, the window of opportunity to request an extension of time for filing a notice of opposition in Australia is quite limited.  Such a request will only be considered after the deadline for filing the notice of opposition (i.e. 3 months from advertisement of acceptance)[xxiii] if the patent has not been granted.[xxiv]  In practice this period tends to be about 2 weeks.

On occasions, extensions of time under s 223 have even been obtained in respect of the deadline for filing a patent application in order to utilise the grace period (and hence avoid novelty-destroying prior art).[xxv]

In addition, as noted above, s 223(2) does not set any time limit so it is possible to request an extension of time due to an error or omission or circumstances beyond control more than a year after the missed time limit.  There has even been an instance where an extension of time of 10 years was obtained in order to lodge a request for a patent term extension for a pharmaceutical patent.[xxvi]

Opposition to the grant of an extension of time (s 223(6))

It’s worth mentioning that both substantive and procedural oppositions are available in Australia and it’s actually possible for the grant of an extension of time under s 223(2) or (2A) to be opposed under s 223(6).  The only grounds are that the requirements of s 223(2) or (2A) are not met.

Conclusion

If you have missed a patent deadline in Australia, all is not lost.

In broad terms, the law in Australia in relation to obtaining an extension of time is more lenient than the law in some other jurisdictions.

Although obtaining an extension of time under s 223(2) relies on the Commissioner’s discretion, the Commissioner tends to be liberal in allowing requests for extensions of time and it is the more generous s 223(2), rather than the stricter s 223(2A), which is usually relied upon.  In order to maximise the chances of an extension being granted, it is strongly advised to contact an Australian Patent Attorney as soon as possible after discovering the failure to do the relevant act in order to ensure the appropriate course of action is taken.

The law in Australia is also relatively relaxed in terms of the time limit for requesting an extension under s 223(2).  However, upon becoming aware of a missed deadline, it is imperative that a request for an extension of time be promptly and diligently pursued in order to have the best chance of obtaining a discretionary extension.  More types of deadlines can be extended than might be expected, including the deadline for filing a divisional application, the deadline for filing a notice of opposition, the deadline for requesting a patent term extension and the deadline for filing a patent application in order to utilise the grace period, so obtaining advice from an experienced practitioner is critical.


[i] Patents Act 1990, s 223(2A) and Patents Regulations 1991, Reg 22.11(1C)

[ii] Patents Act 1990, s 223(2B) and Patents Regulations 1991, Reg 22.11(1D)

[iii] Geron Corporation v ES Cell International Pte Ltd [2005] APO 11 (18 March 2005)

[iv] G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 (6 August 2003)

[v] IP Australia Patent Examiners Manual, 3.11.1.4

[vi] As per the wording of Patents Act 1990, s 223(2A)(b)

[vii] Patents Act 1990

[viii] Total Peripherals Pty Ltd v IBM & Commissioner of Patents, (1998) AATA 784

[ix] Geron Corporation v ES Cell International Pte Ltd [2005] APO 11

[x] Henkel Kommanditgesellschaft Auf Aktien v Fina Research SA (1993) 27 IPR 289

[xi] IP Australia Patent Examiners Manual, 3.11.1.3.3

[xii] Abbott & Lamb Pty Ltd v. Registrar of Trade Marks [1991] AATA 441

[xiii] IP Australia Patent Examiners Manual, 3.11.1.3.3

[xiv] Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832

[xv] Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832

[xvi] Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569

[xvii] GS Technology Pty Ltd v Commissioner of Patents [2004] FCA 1017

[xviii] Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569

[xix] Apotex Pty Limited and Commissioner of Patents and Les Laboratoires Servier (Party Joined) [2008] AATA 226Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569

[xx] IP Australia Patent Examiners Manual, 3.11.1.2 and 3.11.1.2.1

[xxi] Implementing Regulations to the EPC, R135(2) and EPO Legal Board of Appeal Decision J10/01

[xxii] Opposition is a post-grant procedure in Europe (Art 99(1) EPC) so further processing is not available for oppositions because it is only available for applications (i.e. not granted patents) – see Art 121(1) EPC.  In addition, only an Applicant or Proprietor can apply for re-establishment – see Art 122(1) EPC – thus an Opponent also cannot apply for re-establishment.  However, exceptionally an Opponent who has already filed an appeal can request re-establishment in respect of the time limit for submitting the grounds for appeal (EPO Enlarged Board of Appeal Decision G1/86 and EPO Guidelines for Examination (November 2016), E-VII, 3.1.2)

[xxiii] Patents Regulations 1991, Reg 5.4(1)

[xxiv] IP Australia Patent Examiners Manual, 3.11.1.3.5

[xxv] Patents Regulations 1991, Reg 2.2, 2.2A, 2.2B, 2.2C and 2.2D

[xxvi]  Alphapharm Pty Ltd v H Lundbeck A-S [2014] HCA 42

Authored by Serena White, DPhil