Extensions of time for Australian patents in non-pandemic times

IP Australia has now ended the practice of allowing patent applicants a three month extension of time to take a wide range of actions under the Patents Act 1990. These extensions were previously allowed to support businesses during the most difficult times of the COVID-19 pandemic. Specifically, applicants could apply for an extension which was granted automatically for most actions. The only common action excluded was the timely payment of continuation and renewal fees. Under Australian practice, this action was already subject to a six month grace period.

Statutory basis

Relevantly, section 223 (2)(b) of the Patents Act 1990 provides:

(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.

IP Australia took the view that the COVID-19 pandemic likely created “circumstances beyond the control of the person concerned”. This aligned with the interpretation that IP Australia had previously adopted for this provision, namely, force majeure. Consequently, necessary fee payments and supporting declaration were waived.

Some extensions of time may be opposed

Actions, such as obtaining an extension of time to file evidence in an opposition proceedings, may be opposed in accordance with the Patents Act 1990. Thus, whilst IP Australia was content to allow such extensions of time under its COVID-19 provisions, it was required to resolve any third party oppositions to such an extension. An example where IP Australia found in favour of the party seeking the extension is Andrew Bodlovich and Kevin Gleeson v Green Camel Pty Limited [2021] APO 6.

Non-pandemic extensions of time

In our experience, “circumstances beyond the control of the person concerned” are a relatively rare basis for an extension of time. More usually, the basis will be “(a) an error or omission by the person concerned or by his or her agent or attorney”.

In our article Restoration of Australian Patent Rights we set out the procedure by which an extension of time could be obtained to revive a lapsed patent application or ceased patent. The statutory basis for such extensions is section 223, as set above. It will therefore be appreciated that section 223 provides the statutory basis for all extensions of time under the Patents Act 1990 where either s.223 (2)(a) or (b) apply.

Which acts are extendible?

In addition to the restoration of patents/applications, the following acts may be extended:

• all required acts in procedural and substantive oppositions
• the filing of an application for an extension of patent term.

Extension of time practice and procedure

It is well established by the case law that this provision is discretionary. It is not “of right” unlike, for example, an extension of time to pay a renewal fee in the six month grace period. Consequently, there is a strict approach taken by IP Australia in determining if section 223 is satisfied. In order to exercise discretion in favour of an applicant, there is a requirement for the applicant to provide a “full and frank disclosure” of all circumstances relevant to the extension.

Identifying the error or omission

A thorough review of the steps taken by all relevant persons will usually identify the error(s) or omission(s). In our experience, there is often a compounding of errors usually because the correct procedure was not followed.

Causation

Whatever the nature of the error(s) or omission(s), they must result in the failure to carry out the required step. The error(s) or omission(s) must then have occurred before the relevant due date. It is therefore important to identify the intention on the part of the applicant and the timing of that intention. Deciding on a cause of action after a due date can never be regarded as causative.

Who made the error or omission?

In identifying the error(s) or omission(s), the person(s) involved in the error(s) or omission(s) must be determined. It is not permissible to only identify generic entities, such as the IP department. Each person must be named and the circumstances surrounding each person(s) contribution to the error(s) or omission(s) detailed.

Undue delay

Since a failure to take a desired action is significant, once the failure has been detected, the applicant should promptly seek an extension of time. Whilst there is no set time frame for the extension application, the determination of any delay is governed by the date the failure became known to the applicant.

The supporting declaration

An extension of time application must be supported by at least one declaration. Such a declaration must be made, preferably, by a person with first-hand knowledge of the facts surrounding the error(s) or omission(s). Typically, the declarant will be the person who made the error or omission. Obviously, if there are multiple errors there will likely be multiple supporting declarations.

In a declaration there should be a clear chronological set of facts supported by evidence. Amongst the issues to be addressed in a declaration are:

• What was the usual procedure for carrying out the omitted act?
• When was the decision made to carry out the omitted act?
• When was the error detected?
• How or why was the usual procedure not followed?
• Any other circumstances of relevance?

Examination of the extension of time application

An application will be examined by the Patent Office to determine its completeness. Any deficiencies will be raised in one or more official actions. An applicant is permitted to respond with argument and/or supplemental declarations. A decision to disallow an extension of time application is appealable to the Australian Administrative Tribunal (AAT). A decision to allow an extension of time application may be opposed in the Patent Office and ultimately is also appealable to the AAT.

An extension of time application must specify the omitted action and the number of months needed to extend the time to complete that action. It should include the supporting declaration(s) if available and the relevant fee of AUD100/month of extension plus any fee required in action with the action to be taken.

An extension application may be initiated without the supporting declaration or fee payment, with the Patent Office requiring them within a two month timeframe. A failure to meet this time limit may result in refusal of the extension application, although further consideration is possible by requesting a hearing. If the fee is not included in the extension application, a one month period will be set for its payment, and failure to pay may render the extension request null.

If the extension application is accepted and the extension of time request is for more than three months, it will be advertised for two months to allow third parties to oppose the extension. If no opposition is filed, the extension application will be granted.

If the extension application is opposed, both parties are given the opportunity to file supporting evidence and the validity of the opposition is considered at a hearing conducted by the Patent Office. If the opposition is successful, the request for an extension will be refused.

Examples of allowed/rejected extensions

Set out below is a selection of Patent Office decided cases which provide further guidance on the nature of the errors or omissions that have been dealt with including the evidence and circumstances relevant to each extension of time application. It is important to note that decisions are only provided in cases where an extension application is opposed.

• Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power [2020] APO 32 (extension of time to file a complete application - allowed).
• Amicus Therapeutics, Inc. [2020] APO 4 (extension of time to extend grace period to file a patent of addition application - refused).
• Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2019] APO 33 (extension of time to file a notice of opposition - allowed).
• Magnum Magnetics Corporation [2019] APO 3 (extension of time to file a divisional application - refused).
• Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64 (extension of time to file a notice of opposition - allowed).

A very important decision where an extension of time to file an application for a patent term extension was allowed is this decision of the High Court of Australia:

• Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA 42

Although the grant of an extension of time is discretionary, provided an applicant is able to demonstrate a causative error or omission and files its extension application in a timely fashion, it can be reasonably assured that the requested extension will be granted.