Note: It is not in the public interest for the Commissioner to grant an extension of term on a patent that is clearly invalid.

Consequently, before proceeding to consider the extension of term application against the requirements of sec 70 and sec 71, examiners are to check whether there is any information relevant to the validity of the patent that was not available at the time the patent application was accepted. This could be information that is available due to the examination of an equivalent patent application in another jurisdiction, or from court proceedings in Australia or overseas.

If relevant information is found, examiners should consider whether the patent should be re-examined according to the procedures in 5.6.13 Re-examination.

In this topic:

Deficiencies in Application

Patentee Attempts to Rectify Deficiencies

Patentee Does Not Attempt to Rectify Deficiencies

An application should be considered as soon as possible after filing. Prior to granting an extension of term, examiners must determine whether the application meets the requirements of sec 70 and sec 71 (see also 7.12.1 Section 70 Considerations).

In general, patentees would be expected to comply with the requirements in the first instance. In this situation, the application for an extension of term should be accepted (see 7.12.3.3 Grant of Application for Extension of Term). However, if examiners identify any deficiencies, they should proceed as outlined below.

Deficiencies in Application

Where there are deficiencies in the application, examiners should issue the patentee with a notice outlining these and provide them with a 2 month period in which to provide further information (reg 6.11). Upon request from the patentee, the Commissioner can grant up to a 4 month extension of this period (i.e. 6 months in total from the initial notice). If the patentee requires more than 6 months from the initial notice, they will need to use the provisions of sec 223 and demonstrate that either:

there was an error or omission by the person concerned or by their agent or attorney; or
there were circumstances beyond the control of the person concerned.

Patentee Attempts to Rectify Deficiencies

If the patentee overcomes the deficiencies raised in the notice, the application should be accepted.

Where the patentee attempts to rectify the deficiencies, but deficiencies still remain, the Commissioner may again issue a notice as above, or may initiate action to refuse the application. In the latter situation, the case should be forwarded to OEP for action.

Note: Section 104 may be used to amend the application for an extension of term to correct any deficiencies. However, if the amendments materially alter the scope or the meaning of the application (e.g. if the application referred to the wrong patent number), then they will have to be advertised (reg 10.5(2)).

Patentee Does Not Attempt to Rectify Deficiencies

Where the patentee does not take steps to rectify the deficiencies identified within the time allowed, the Commissioner will initiate action to refuse the application (see 7.12.3.4 Refusal of Application for Extension of Term).