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.
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:
(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.
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.
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?
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.
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  APO 11 (18 March 2005)
[iv] G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited  APO 28 (6 August 2003)
[v] IP Australia Patent Examiners Manual, 22.214.171.124
[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  APO 11
[x] Henkel Kommanditgesellschaft Auf Aktien v Fina Research SA (1993) 27 IPR 289
[xi] IP Australia Patent Examiners Manual, 126.96.36.199.3
[xii] Abbott & Lamb Pty Ltd v. Registrar of Trade Marks  AATA 441
[xiii] IP Australia Patent Examiners Manual, 188.8.131.52.3
[xiv] Sanyo Electric Co Ltd v Commissioner of Patents  AATA 832
[xv] Sanyo Electric Co Ltd v Commissioner of Patents  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  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)  AATA 226; Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569
[xx] IP Australia Patent Examiners Manual, 184.108.40.206 and 220.127.116.11.1
[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, 18.104.22.168.5
[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  HCA 42
Authored by Serena White, DPhil