7.11.1.4.1 Filing a Request under Subsection 223(2A)

Key Legislation:

Patents Act:

• s223 Extensions of Time

Patents Regulations:

• reg 22.2C Failure to pay: certain other filing fees etc
• reg 22.2F Consequence if Commissioner does not invite payment
• reg 22.11 Extension of time
• Schedule 7 Fees

Related Chapters:

•  5.6.2.4 Payment of fees

In this topic:

Overview

The Declaration

The Fee

Common deficiencies in the request​​​​​​​

Overview

Pursuant to reg 22.11(1), an applicant seeking an extension of time under section 223(2A) must:

• file a request for an extension of time in the approved form (available on the IP Australia website)
• file a declaration setting out the grounds on which the application is made; and
• pay the fee for requesting the extension - see Schedule 7, item 228.

The Declaration

The approved form of a declaration under the Patents Act can be found on the IP Australia website as can the approved form for an “Application for an extension of time under section 223”.  The person making the declaration must sign it.   

In the declaration, the applicant for an extension of time under section 223(2A) must establish that he or she exercised due care as required by the circumstances, to ensure the act was done in the prescribed time, despite which, the act was not done in time.  The declaration should provide a full and frank disclosure of all the surrounding circumstances, and explain the systems that were in place and everything that was done, that could reasonably be expected to ensure that the relevant act was done within the required time.

Where it is not possible for the applicant to file the declaration with the application, the declaration should be filed as soon as practicable thereafter. Given the provisions of reg 22.11(1), the application under section 223 is not made until such time as the declaration is filed.  

Where a declaration is not filed with the application, the Commissioner will allow 2 months for a party to file their declaration.  If no declaration is filed within this time, the extension under section 223 may be refused unless the person requests a hearing.  Any declaration received before the hearing will be considered as quickly as possible, with the hearing being cancelled if it is no longer necessary.

The Fee

Fee item 228 in Schedule 7 of the regulations indicates the fee for extensions under section 223(2A).  The amount payable is determined by the length of the extension granted, not by the date on which the extension is granted.

Fee item 228 specifies the fee "on filing an application", and so the appropriate fees as calculable at that time should accompany the application. Under reg 22.2C, if the section 223 fees are not paid when the application is filed, an ITP (invitation to pay) will issue.  Failure to issue the notice within time will enliven the provisions of reg 22.2F  (see 5.6.2.4 Payment of fees for further information).

Regarding the potential for refunds of section 223 fees, see 5.6.2.4 Payment of fees for a discussion of the issues.  

Common deficiencies in the request

Where a request under section 223 is not sufficient a further request and/or declaration may be required.  

An indication of common deficiencies to be avoided in section 223 requests is provided at 7.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A).