Section 137 is a ‘beneficial’ provision. This means that its purpose is to rectify an error or omission – that is, to remedy the problem of not completing a relevant act in the prescribed period. It should therefore generally be applied in a way that will benefit the customer (see Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 480; Chalk v Commissioner for Superannuation (1994) 50 FCR 150 at 156) and is applicable unless there is some clear indication to the contrary (see Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; Danby Pty Ltd v Commissioner of Patents and Another (1988) 12 IPR 151).

This means that when examining a request for extension of time under s 137, the Registrar should give the benefit of the doubt to the customer, while also thinking about the consequences of granting the request and how that may affect others. See Registrar’s discretion.

Relevant time period

For s 137 to apply, there must be a relevant time period to extend. In particular, s 137 cannot normally be used to ‘extend’ the time for filing a design application where no earlier priority rights exist.

See Norman Stibbard v The Commissioner of Patents (1986) 7 IPR 337, where the ART upheld the delegate’s decision to refuse an extension of time to lodge a patent application:

The Tribunal considers that, as expressed by Stephen J, as he then was, s 160(2) does not contemplate what amounts effectively to antedating the lodgment of a complete specification so as to effectively defeat the interests of other inventors who have lodged their specifications more promptly. If it were otherwise, the lonely inventor working away unaware of the inventive steps of others would suffer a rude shock if he promptly lodged his application and specification only to be defeated by a less prompt inventor applying under section 160(2) for an indulgence.

Justification for extension

For an extension to be granted, there must have been an error or omission or circumstances beyond the person’s control. The mere fact that an act was not done within a required time frame does not mean that an extension can be granted.

Note that if the Registrar believes that the conduct of the customer’s agent led to the error or omission, we should grant the extension on that basis even if the agent does not raise it or rely on it when seeking the extension (G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391).

Definition of ‘error or omission’

There is no clear or complete definition for the words ‘error or omission’. But there must be an error or omission as opposed to a deliberate decision. There is a difference between:

errors or omissions that affect the ability of parties to carry out of their intentions
the consequences of deliberate decision (Total Peripherals Pty Ltd v IBM & Commissioner of Patents (1998) AATA 784)

Example

The decision in Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 13 IPR 569 described ‘error or omission’ as follows:

It is in my opinion difficult to suppose that only the inadvertence and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word ‘error’ is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slip …

I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension. By no means every judgement by ‘the person concerned’ or by ‘his agent or attorney’ which can be shown to have been mistaken will answer the description ‘error or omission’ in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness of error.

The references here are to s 160 of the Patents Act 1952, which is equivalent to s 137 of the Designs Act 2003.

The decision in G S Technology Pty Limited v Commissioner of Patents (2004) 63 IPR 9 stated:

[65] Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application (and thus not have it lapse), and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.

[72] … assessing the conduct and state of mind of a person who is not a patent attorney against standards of what a competent attorney would have known, or would have done, to determine whether a discretion should be exercised, is wrong in principle.

[82] The observations of Jenkinson J in Kimberly-Clark specifically note that an extension can occur with or without moral fault on the part of the agent. Further, what his Honour in fact said was that it was necessary to have means to evaluate the applicant’s moral claim to an indulgence, so that if there has been an absence of full and frank exposure of the circumstances relevant to the failure to do the act or make the step occurred, the means to evaluate the applicant’s moral claim to an indulgence will be lacking.

Causal link

There must be a causal link between the reason given for extension (i.e. the error/omission or circumstances beyond control) and the failure to complete the relevant act within the time frame.

The error/omission or circumstances beyond control must have been the cause of the act not being completed within the time frame.

Generally, the customer needs to provide enough written evidence to satisfy the Registrar that their failure to meet a deadline for doing a relevant act was caused by any of the acceptable reasons for extension. The applicant for an extension must also demonstrate that they intended to complete the required act and that their or their agent’s error or omission caused the failure to meet the time requirement (see Kimberly-Clark at 579).

Burden of proof

The customer must provide the Registrar with sufficient material to justify the grant of an extension of time (except in the case of an error or omission by the Registrar). However, this does not amount to the customer having to satisfy a ‘burden of proof’. What is required is material sufficient to justify the administrative exercise of the relevant power (see Re Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 479).