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Missed a patent deadline in Australia? It may not be as bad as you think

10 January 2017
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Stuart Irvine

Stuart Irvine

Principal, Sydney | BSc, LLB, LLM

Australian patent law is quite generous when it comes to extensions of time. Where a deadline is missed due to a genuine error or omission, it is often the case that the deadline can be extended. It is not necessary to show that the deadline was missed despite due care.

A recent Patent Office decision confirms the generosity of Australia’s approach to extensions of time.

In Woodside Energy Limited v Richard John Moore1, a view was formed that the Patent Office would reject an application because the technology was not (in the opinion of the person involved) new/inventive. Despite this view, the application was accepted and the deadline for opposing grant passed without any opposition being filed. An extension of time to oppose grant was granted on the basis that ‘the assessment that the application would not be accepted was an error or omission which was directly causative of the failure to file the Notice of Opposition’2.

Extensions of time in Australia

Australia’s Patents Act includes provisions that allow for deadlines in respect of ‘relevant acts’ to be extended. These ‘relevant acts’ include the vast majority of time-sensitive actions prescribed by the Patents Act.

Generally speaking, and for relevant acts, the Commissioner of Patents must extend a deadline that was missed due to the error/omission of the Patent Office, or that was missed despite due care of the person concerned.

In addition, however, the Commissioner has a discretion to grant an extension of time where a deadline is missed due to:

  1. circumstances  beyond the control of the person concerned; or
  2. an error or omission by the person concerned.

It is in this ‘error or omission’ ground for an extension of time that Australia’s generosity is evident. Typically, this discretion is exercised where it can be shown that a deadline was missed due to a genuine error or omission, prompt action is taken once the error/omission has been identified, and the circumstances of the error/omission are candidly explained to the Patent Office.

An error or omission

For the purposes of an extension of time, case law has established that an error/omission may be involved where something has affected the carrying out of a formed intention or something has affected the actual formation of an intention.

Such errors/omissions may be found, for example, in the breakdown of established procedures, in errors of judgement, in flawed mental functions, in memory lapses, or in accidental slips. Importantly, though, in order for an extension of time to be granted the error or omission must ultimately be the cause of the failure to perform the relevant act.

Woodside Energy Limited v Richard John Moore [2016] APO 85
The December 2016 Patent Office decision of Woodside Energy Limited v Richard John Moore confirms the breadth of Australia’s extension of time provisions, and adds a further example of the type of error that can potentially support an extension of time: an error in judgement as to how the Patent Office is likely to handle a particular case.

The Woodside decision concerns a request (made by Woodside Energy) for an extension of time to oppose the grant of a patent application (owned by Richard John Moore). The Australian Patents Act provides that such an opposition must be filed within three months of the application being advertised as accepted.

In the Woodside case, the Chief Science and Technology Manager of Woodside Energy was aware of the patent application in question prior to acceptance. He reviewed the application and, with input from Woodside’s engineers, formed the view that the application described technology that was an obvious formulation of existing know-how and, therefore, that the Patent Office would reject the application. No professional advice was sought, and no watch of the application was instigated.

Despite the view formed by Woodside Energy’s manager and engineers, the application was accepted by the Patent Office, and was advertised as such on 26 May 2016 (making the opposition deadline 26 August 2016).  On 30 August 2016, Woodside’s manager became aware that the application had, in fact, been accepted and requested an extension of time in which to oppose grant.

Ultimately, the request was granted. This was on the basis that the formation of the view that the application would not be accepted was the type of ‘faulty mental process’ for which an extension of time could be granted, and was directly causative of the failure to file the Notice of Opposition within the required time period.

Other notes on extensions of time in Australia

Under the error/omission provisions described above, missed patent deadlines in Australia can often be saved.

Furthermore, no time limit in which a request for an extension of time must be made is prescribed, and lengthy extensions (of several years and more) have historically been granted.

In this regard, however, it is important to note the discretionary nature of the power to grant an extension where a deadline is missed due to an error or omission, and that one of the factors that comes under consideration in relation to the discretion is whether there has been any undue delay. Accordingly, if a request for an extension of time is to be made it is critical that the request is filed promptly after the missed deadline (and, accordingly, the error/omission leading thereto) is identified. Undue delay in this regard may well result in an extension being refused even if a valid error/omission is found.

1 [2016] APO 85 (1 December 2016)
2  [2016] APO 85 (1 December 2016), at 31

About the Author

Stuart Irvine

Principal, Sydney | BSc, LLB, LLM

Stuart’s focus: computer-implemented inventions, information and communications technology, consumer products and designs.

Learn more about Stuart
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