Extension of time

Many stages in the patent application process have deadlines. If you miss a deadline, in some circumstances you may be eligible to apply to extend the deadline.

If you need an extension of time, we urge you to act quickly.

When you apply for an extension, you will need to outline the reasons why you need it.

The circumstances in which an extension of time is allowable 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 a 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

A declaration is required

In order to apply for an extension of time, your application must include one or more declarations  explaining why the fee was not paid or action not performed by the required date. Declarations are written statements of fact. Patent Regulations 22.13 provides requirements for declarations under the Patents Act 1990 and Patents Regulations 1991.

You may decide to make a statutory declaration under state law, territory legislation or the Statutory Declarations Act 1959, however a signed declaration under the regulations of the Patents Act 1990 is sufficient.

You can use our declaration form to make sure all requirements are met.

What to include in your declaration

The declaration(s) you supply with your extension of time 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 action not being taken within the required time. You may need declarations from a number of people 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 it costs

The cost for an extension of time will depend on the circumstances.

  • There is no fee if you are asking for an extension of time because of an error made by us.
  • If you are asking for an extension of time because of an error or omission made either by yourself, 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.

Please note the following are fees charged by our office. If you have an attorney acting on your behalf you will be liable for additional legal fees.

All fees are from Schedule 7 of the Patent Regulations 1991.

Schedule 7 item

Action

Fee

226

Request for extension of time. Error or omission by the person concerned or by their agent s223(2)(a).

$100 for each month or part of month for which the extension is being sought.

227

Request for extension of time. Circumstances beyond the control of the person concerned s223(2)(b).

$100

228

Request for extension of time. Circumstances where due care has been taken s223(2A).

$100 for each month or part of a month for which the extension is being sought.

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 be given a chance to provide more information to justify your eligibility to claim an extension of time.

If the extension cannot be granted, even with extra information, you can appeal the decision to the Commissioner of Patents.

If the commissioner refuses to grant you an extension, you can appeal to the Administrative Appeals Tribunal.

Opposition to an extension of time

If the extension of time you ask for is for more than three months, we must advertise your application in the Supplement to the Australian Official Journal of Patents. This gives other people an opportunity to oppose the validity of the extension.

Any opposition to an extension of time must be filed within two months of the date the request is advertised. The commissioner will then send a copy of the notice of opposition to 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 is valid. If the opposition is successful, 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 should consider seeking professional advice in these circumstances.

Last updated: 
30 June 2016