Missing a deadline that leads to a patent application or a granted patent becoming abandoned is not necessarily the end of the road in Australia. However, the provisions for restoration of patent in Australia are nuanced compared to other jurisdictions.

The mechanism is not a request for a restoration of a patent per se, but rather a request for extension of time to perform the missed act that resulted in the deadline or act not being met. The extension of time provision is governed by s223 of the Patents Act 1990.

s223(2)(a) provides that where, because of an error or omission by the person concerned or by his or her agent or attorney, a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may extend the time for doing the relevant act. There must be a causal connection between the error or omission and the relevant act that is required to be done within a particular time. The phrase “error or omission” has a broad scope and includes accidental slips, inadvertencies and errors caused by faulty reflection, an unexpected failure to exercise due diligence, a flaw in mental function in carrying out an intention, and/or a breakdown in procedure in effecting an intention (Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64). Examples of what are not regarded as an error or omission include lack of funds to proceed with the case or a deliberate policy decision or decision that leads to the failure to perform the relevant act.

s223(2)(b) provides that an extension of time for restoration of a patent in Australia can be granted where circumstances beyond the control of the person concerned lead to the failure to do the relevant act in the time specified. Some examples of such circumstances include force majeure, sickness or accident, and awaiting a court judgement.

The time can only be extended for a “relevant act”, meaning those acts for which there is a legislative requirement that the act be done within a certain time. Examples of what do not constitute a relevant act include making a deposit of a microorganism or for filing a first-instance patent application. Notably, the 12-month grace period for self-disclosure is a relevant act and may be extendible under s223.

An applicant for an extension of time for restoration of a patent must demonstrate that they had an intention to do the relevant act within the time prescribed, and that an error or omission on their, or their agent’s, behalf reasonably could be said to have frustrated that intention. An unexplained delay to make the extension of time application may lead to the application being rejected.

The s223(2)(a) extension of time application has two components:

• File an application for an extension of time with payment of official fees. In addition to any official fees payable to do the relevant act (e.g. the renewal fee), an extension of time fee of AUD100 per month, or part thereof, is payable.
• File a declaration showing that the failure to do the act was due to an error or omission on the part of the patentee or the agent. The declaration is due within two (2) months of filing the extension of time application.

The declarant must be the party whose conduct or actions resulted in the error or omission and has direct knowledge of the circumstances. Hearsay evidence may be accepted by the Commissioner if the party is no longer in the employ of the owner or the agent.

Grant of the extension of time is at the discretion of the Commissioner of Patents. The declaration in support of the request must be a full and frank disclosure of the circumstances of, inter alia, all the conduct, knowledge, beliefs and mental processes of the extension of time applicant. This is relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct. Failure to provide a full and frank disclosure can result in the extension of time application being refused.

If granted, the extension of time will be advertised for a period of 3 months and can be opposed by a third party.

The Courts have regarded section 223 for restoration of patent in Australia as a beneficial provision that should be exercised beneficially. This is underscored by the fact that an extension of time of 10 years to file a patent term extension has been granted. On balance, the Commissioner also applies the s223 provisions beneficially, but what is clear is that s223 is not a general power of extension to enable changes of mind and the like.

This post has been written by Dr. Hedie Meka. Contact us if you require assistance with the restoration of a patent in Australia.