Extensions of time & late filing of patent applications

In limited circumstances it is possible to file an application to extend the time period to carry out an action prescribed under the relevant statute, including filing of a National phase or Convention application. Generally the key requirement is that at all times it was the applicant’s intention that the relevant action should be completed by the due date, and that there was an error or omission that precluded the intention from being realised.

An extension of time application should be filed as soon as it has been realised that a relevant act was not completed by the relevant due date, as in deciding whether to grant an extension application, the patent offices will have regard as to the diligence of the applicant in seeking to restore rights once the failure to undertake a relevant action has be detected. For filing out of time National phase or Convention applications, this generally means filing an extension application at the time of filing the patent application.

Generally, after filing an extension application, the relevant patent office will call for a full and frank disclosure of the relevant circumstances, identifying the error or omission and the connection between it and the act not being done. This is normally required in the form of a statutory declaration from a relevant person.

Importantly, in Australia the Courts have made it quite clear that the extension of time provisions are, in appropriate factual circumstances described above, to be applied beneficially in favour of the patent application. Consequently, extensions of time have been allowed, even in circumstances where as a result of a mental defect, a positive decision was made in error not to pay a renewal fee.

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