The Patents Act in Australia includes broad remedial provisions for extending the time to perform various acts even after grace periods have expired. For example, an unintentional failure to enter the national phase in Australia can be remedied or rights lost by the lapsing of a patent may be restored.

Scope of Section 223
Section 223 of the Australian Patents Act covers extensions of time for any acts in relation to a patent, a patent application or any proceedings under the Patents Act, apart from a few specific exclusions.

When may an extension be granted?
There are three broad scenarios covered by s.223.

First Scenario - Subsection 223(1)
Under subsection 223(1), the Commissioner of Patents MUST extend the time for doing an act where a deadline is missed, not because of a fault of the applicant, but because of an error or omission by:

the Australian Patent Office;
a Receiving Office of the World Intellectual Property Organisation (WIPO); or the International Bureau of WIPO.

Second Scenario - Subsection 223(2A)
Under subsection 223(2A), the Commissioner of Patents MUST extend the time for doing an act where despite the due care of the applicant, a relevant act is not done within time.

However:

the maximum extension of time available is 12 months; and action must be taken by the applicant within 2 months of realising that the act has not been performed.

Although any delay longer than 2 months precludes an extension under this subsection, an extension may still be available under another subsection as discussed below.

Third Scenario - Subsection 223(2)
Under subsection 223(2), the Commissioner of Patents has a discretion to extend the time for doing an act where, due to:
(a) an error or omission by the person concerned or by his/her agent or attorney; or
(b) circumstances beyond the control of the person concerned, a relevant act is not performed on time.

There are no limitations under this subsection regarding the length of the extension of time being sought, nor is there a time limit for seeking the extension of time. However, any undue delay on the part of the applicant for the extension will be a prejudicial factor in assessing the application for the extension.

Section 223(2): Definition of Error or Omission
The courts have considered what may constitute an "error or omission" and have been reluctant to restrict the scope of these terms other than to say that failure to do the act or take the step cannot, of itself, be the error or omission.

Errors or omissions as a result of faulty reflection, deliberation or mistaken judgement are covered by s.223(2). Even errors or omissions arising from negligence or incompetence are not ruled out.

Section 223(2): Definition of Circumstances Beyond the Control
S.223(2) also relates to failures due to "circumstances beyond the control of the person concerned". This provision covers natural disasters or other "Acts of God", war and the failure of third parties. The circumstances must be outside the control of the person concerned and not avoidable by the exercise of due care by that person. Examples are delays by post, delays by couriers, accident and sickness. Examples not amounting to "circumstances beyond the control" are lack of funds, bankruptcy and absence of an employee.

Exercise of Discretion
The power to grant an extension of time under s.223(2) is discretionary. The person seeking the extension must provide a prompt, frank, comprehensive and clear disclosure of all the circumstances surrounding the failure to do the act or take the step so that the Commissioner can decide whether an extension of time is justified. The disclosure must be in the form of an affidavit by the person who best knows all the facts.

The Courts have held that the supporting evidence must go beyond a disclosure of the processes by which the errors came to be committed and must expose frankly all the conduct, knowledge, beliefs and mental processes relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct.

Opposition to Request for Extension of Time
Applications for extensions of time of more than 3 months and applications for an extension of time to pay renewal fees after the 6 month grace period are advertised in the Official Journal, and may be opposed by a third party if requested under s.223(2A) or s.223(2).

Protection of Third Parties
There are provisions for the protection or compensation of persons who exploit an invention because a patent application has lapsed or a patent has ceased and the application/patent is subsequently revived under s.223. These provisions allow such persons to apply to the Commissioner of Patents for a licence to continue to exploit the invention.

Patent infringement proceedings cannot be brought for an infringement committed between the day on which a patent application lapsed and the day on which it is restored or the day on which a patent ceased and the day on which it is restored.

Summary
In summary, an extension of time to do an act may be available depending on the facts of the case. Undue delay weighs against the applicant for an extension of time so it is best to seek professional advice as soon as you become aware of a missed deadline.

This overview is intended merely to highlight areas where Australian Law may be different to that of other jurisdictions. For further or more specific information on Remedial Extension of time provisions in Australia, please contact Gwen Bentley (gbentley@fbrice.com.au), Chris Owens (cowens@fbrice.com.au) or any of the other practitioners of F B Rice & Co via our website at www.fbrice.com.au.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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