Extension of Time

For instance, it is possible to extend the deadline for paying an annuity even after a patent or application has lapsed. It is also possible to extend the deadline for making a patent application claiming convention priority, beyond the one year prescribed, and to extend the 21 month or 31 month deadlines for entering the Australian national phase of an International patent application.

 

In order to obtain an extension of time the failure to comply with the original deadline must have been unintentional and must have been due to an error or omission by the person concerned, or by their agent or attorney, or due to circumstances beyond the control of the person concerned.

 

The "error or omission" part of the provision can be satisfied where the failure to comply with the time limit was due to a simple failure on the part of the person responsible, or of an office system. Any genuine error or omission leading to a failure to comply with a time limit will usually satisfy the requirements. For instance, the deadline for entering the national phase has been extended where "Austria" was mistakenly designated in an international application instead of "Australia". However, non-compliance with a deadline merely due to financial difficulty has been found not to be an acceptable excuse.

 

The "circumstances beyond the control" part of the provision may generally be considered a force majeure requirement. For example, the requirement may be satisfied if the failure to comply with the time limit was due to an unavoidable loss of mail, or acts of war.

 

In all cases it is necessary to demonstrate that the applicant or patentee intended to meet the limit at the time the deadline passed, and that reasonable steps were taken to ensure that it would be met.

 

An application for an extension of time must be filed as soon as it is realised that there has been a failure to meet a deadline. Any delay in filing the application can be prejudicial. When making the application, all the steps which should have been taken before the deadline, including the payment of any official fee, must be completed. A substantial fee is also payable for each month for which the extension of time is required.

 

The application must be followed up by evidence in Declaratory form as soon as possible. Any delay in filing the evidence can also be prejudicial. The Statutory Declarations supporting the application must detail the circumstances surrounding the failure to meet the deadline and be supported by documentary evidence. It is frequently necessary to have evidence from the person who decided to take the step before the deadline, including any file notes or memos. It is almost always necessary to explain, in detail, the systems and procedures in place to ensure that a decision is put into effect. The cause of the failure to meet the deadline must usually be explained, in detail, by the person responsible or the person who discovered the failure, and must be accompanied by copies of reminders and all other relevant documents. It will be fatal to the application if it becomes apparent that a full and frank disclosure has not been made. If you provide us with full details we shall be able to identify suitable declarants, and to prepare suitably worded draft Declarations for your approval and execution.

 

The longer the extension required, the more expensive and difficult it will be to obtain. The Patent Office must take into account the public interest and, for instance, where a patent has lapsed for several years it can be very difficult to obtain an extension of time to pay renewal fees.

 

Where an application is made to extend a deadline for more than 3 months, the application will be advertised and any interested person may oppose the application. Where an application is opposed it is generally much more difficult to succeed. Typically, very exhaustive supplementary evidence will be required, and it will be necessary to attend a hearing in order to settle the opposition.

 

Where an application or patent is brought back into force as the result of a successful extension of time application, provision is made to compensate anyone who genuinely exploited the invention in the meantime without any fraudulent intent.

 

Click here to download our Extension of Time fact sheet.