There are several deadlines in the patent application process that you need to meet to prevent your application lapsing. If you miss a deadline, or think that you need more time, you may be eligible to request an extension of time.
If you need to request an extension, it's best to do this as soon as possible.
Am I eligible for an extension?
Extensions of time are possible in the following circumstances:
- An error or omission by yourself, your employees, agent or attorney
- Situations beyond your control, such as sickness or accident, or delays by post or courier
- Situations where in spite of you having reasonable procedures and practices in place, you still couldn't carry out the required action.
Lack of funds to pay a fee or excessive workloads aren't considered to be circumstances beyond your control.
How much does it cost?
The total cost depends on the circumstances behind your request. The most common extension costs $100 per month that the extension is sought for.
How to apply for an extension
1. Complete a declaration
Your application must include a declaration that explains why the action wasn't completed by the required date or why the fee wasn't paid.
Your declaration 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 the action not being taken within the required time frame
- 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 occurred between when you discovered the problem and when you made the application for an extension of time
- Include copies of any documents that support explanations.
You may need declarations from others who have direct knowledge of events to support your case.
2. File your request
We'd suggest that you apply for an extension of time to cover the period since the due date passed, and the time that you think you'll need before completing the action.
You'll need to:
- Create an account with our online services
- Fill out your request form and upload your declarations. This should only take 15 minutes, and you can save your progress as you go
- Pay the required fee.
3. See the outcome
Once your application has been received, we'll check to see if it meets the requirements of the Patents Act 1990. If it does, we'll approve your extension. We'll let you know the outcome via your online services inbox.
If it doesn't meet the requirements, we'll let you know and outline the reasons why. You'll have the chance to provide more information to justify your reasoning.
If the extension can't be granted, even with more information, you can appeal the decision to the Commissioner of Patents. If this fails, you can appeal to the Administrative Appeals Tribunal.
You'll need to download and complete the below declaration form as part of your request.
Opposition to an extension
If you request an extension of time of more than three months, we'll advertise this in the Australian Journal of Patents. This gives other people the opportunity to oppose the validity of the extension, which they can do within two months of advertisement.
If someone files an opposition, we'll send a copy of the notice of opposition to you as soon as possible. Both you and the opponent will have an opportunity to provide evidence in support of your respective positions. A hearing will be held with one of our hearings officers, who will decide if the opposition is valid. If the opposition is successful, your extension request will be refused.
Both parties can file an appeal against any decision issued by the hearings officer.
Patent matters can take a long time to resolve, and often involve complex legal issues.
If you need help to oppose or defend an opposition, you should consider seeking professional legal advice.