Extension of time


If you need an extension of time, we urge you to act quickly. When you apply, you will need to outline the reasons why you need an extension. The circumstances we allow include:

  • an error or omission by yourself, your employees, agent or attorney.
  • situations beyond your control, for example delays by post or courier, a sickness or accident (note that lack of funds to pay a fee or excessive workloads are not considered to be circumstances beyond your control).
  • situations where in spite of you taking due care, you still could not carry out the required action. What we mean by 'due care' is that you have reasonable procedures and practices in place to perform the required action.

If you are asking for an extension using these circumstances, there are time limits on when the application can be made and the extension of time period available.

If the extension of time you ask for is for more than three months, we must advertise your application so that other people have an opportunity to oppose the extension.

A declaration is required

In order to apply for an extension of time, your application must include one or more declarations, setting out the reasons why the fee was not paid or act not done by the required date. Declarations are written statements of fact, witnessed by an authorised person. Patent Regulations 22.12 and 22.13 provides requirements on declarations required by the Patents Act 1990 and Patents Regulations 1991.You will need to complete a Patents Declaration Form.

A statutory declaration may be made under state law, territory legislation or the Statutory Declarations Act 1959, however a declaration witnessed under the regulations of the Patents Act 1990 is sufficient.

Who can witness a declaration?

Declarations under the Patents Act 1990 can be witnessed by people who are currently licensed or registered to practice in one of the following occupations:

  • chiropractor
  • dentist
  • legal practitioner
  • medical practitioner
  • nurse
  • optometrist
  • pharmacist
  • physiotherapist
  • patent attorney
  • psychologist
  • trade mark attorney
  • veterinary surgeon
  • person on the roll of the Supreme Court of a state or territory or the High Court of Australia as a legal practitioner

or is one of the following:

  • agent of the Australian Postal Corporation who is in charge of an office supplying postal services to the public
  • Australian consular official or Australian diplomatic official
  • bailiff
  • police officer
  • judge of a court, justice of the peace
  • clerk of a court or magistrate
  • marriage celebrant
  • member of the Institute of Chartered Accountants
  • officer of the Australian Defence Force
  • minister of religion
  • permanent employee of a local government authority with more than five years continuous service
  • teacher employed on a full-time basis at a school or tertiary education institution

Declarations may be made in foreign countries and may be witnessed by a person who is authorised to do so in that country, for example - a notary public.

What to include in your declaration

The declarations you supply with your request must:

  • give a full and frank disclosure of all the relevant circumstances.
  • describe the chain of events that led to the fee not being paid or act not being done in time; this may mean that you have to get declarations from a number of people who were involved and who have direct knowledge of the events.
  • explain the error or omission made, the circumstances beyond your control, or how, in spite of you taking due care, you missed the deadline.
  • explain any delays that happened between when you found out there was a problem and when you made the application for an extension of time.
  • include copies of any documents that support the explanations.

How much does it cost to file an extension of time?

If you are asking for an extension of time because of an error made by IP Australia, there is no fee.

If you are asking for an extension of time because of an error or omission made either by yourself, by your agent or attorney, the fee increases for every month of extension required.

If you are applying because of circumstances beyond your control, there is a single fee, regardless of the length of the extension sought.

If you are relying on due care, the fee increases for every month of extension required.

What we do with your application

Once your application has been received, we will check to see it meets the requirements of the Patents Act 1990 and if it does, we will approve your extension of time.

In the event it does not meet the requirements, we will inform you and outline the reasons why. You will also be given a chance to file more material to support your request.

If the extension cannot be granted, even with extra material, you can ask to be heard by the Commissioner of Patents.

If the Commissioner refuses to grant you an extension, you can appeal to the Administrative Appeals Tribunal against that refusal.

Patent opposition to an extension of time

When you submit a request for an extension of time, interested parties are allowed to oppose it. They may challenge the validity of your extensions before the Commissioner of Patents allows them.

If an opposition to an extension of time is to be filed, it must be done within one month of the advertised request. The opponent must also serve a copy of the notice of their opposition on you as soon as possible.

When an opposition is filed, you and the opponent have an opportunity to provide evidence in support of your respective positions. A hearing is then held before a delegate of the Commissioner, who decides whether or not the opposition succeeds. If the opposition succeeds, then your request for an extension will be refused.

Please note, either side may file an appeal against any decision issued by the delegate.

Patent matters may take a long time to resolve and can often involve complex legal issues. You may consider seeking professional advice on these matters.

Last Updated: 30/9/2011