5.6.9.3 Extension of Acceptance Period

Date Published

Key Legislation

Patents Act: 

  • s15 Who may be granted a patent
  • s27 Notice of matters affecting validity of standard patents
  • s32 Disputes between applicants etc.  
  • s36 Other applications by eligible persons  
  • s49 Acceptance of patent request: standard patent
  • s49A Postponing acceptance of patent request: standard patent  
  • s50 Application or grant may be refused in certain cases  
  • s50A Revocation of acceptance  
  • s142 Lapsing of applications 
  • s222A Doing act when Patent Office reopens after end of period otherwise provided for doing act  ​​​​​​

Patents Regulations:

  • reg 3.5AC(9) PCT applications--amendment
  • reg 3.5AF(2D) PCT applications--translations and prescribed documents
  • reg 13.4 Prescribed period: acceptance of request and specification
  • reg 22.15A Certificate of verification and corrected translation

Below are some scenarios in which the normal 12-month period for acceptance may be extended.​​​​​​​

Warning: The FDA should only be changed when it is appropriate to do so. Examiners should consult Oppositions before changing the FDA. If Oppositions are in agreement, a case note should be added to the file, stating that the FDA has changed.​​​​​​​

Additionally, the examination report should indicate that the FDA is a later date. This may be specified by including an additional comment in the introductory paragraph as follows:

“The provisions of regulation <13.4(1)(c - k)​​​​​​​ select appropriate regulation> provide that the final date for acceptance of this application is now <insert appropriate date in bold>.”

Objections Based on "Whole of Contents"

Where an objection is raised based on "whole of contents", then the period of time for acceptance may be extended where necessary (see also 5.6.5.2 Whole of Contents). The time for acceptance may be extended until 3 months after the date of:

  • publication of the cited specification; or
  • lapsing, refusal or withdrawal of the citation; and
  • ​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​whichever is the earliest of the above (reg 13.4(1)(d)).​​​​​​​

Objections Based on a Section 27 Notice

An objection based on a document from a s27 notice may in some circumstances extend the period of time for acceptance by up to 3 months (see also 5.6.4.5 Third Party Notifications).

Where the period ending 3 months from the date of a report that first raises an objection based on a s27 notice extends beyond the final date for acceptance (FDA) that otherwise applies (generally 12 months from the date of the first report), the FDA will be the later date, that is, 3 months from the date of the report which first mentions the objection (reg 13.4(1)(l)(i)).​​​​​​​

The report should identify any documents arising from a s27 notice which form the basis of an objection.

Documents From Section 27 Notice – Outstanding Request for Corrected Translation or Certificate of Verification

Note that the information in this part only applies to translations filed after 25 September 2019.

Where a document accompanying a s27 notice is not in English, the person filing the notice is required to provide a translation (see 5.6.4.5 Third Party Notifications).

In rare circumstances, the person who filed the notice may be requested to file either:

  • a corrected translation of the document and a certificate of verification for the corrected translation; or
  • a certificate of verification for the translation.

Where the corrected or verified translation has not been received prior to issuing an examination report, examiners should, following consultation with Patent Oppositions, include an additional comment in the introductory paragraph of the report as follows:

“Note: A section 27 notice has been filed in respect of this application. The notice is accompanied by a translation of a document. The person who filed the notice has been requested to provide a corrected translation of the document and a certificate of verification for the corrected translation, or a certificate of verification for the translation of the document, under regulation 22.15A.

Following receipt of the corrected/verified translation, the final date for acceptance of this application may change under regulation 13.4(1)(c) or regulation 13.4(1)(l).”

Where a novelty or inventive step objection is subsequently raised based on the corrected/verified translation, and examiners consider that the time for acceptance will be extended, they should first consult Oppositions. If Oppositions are in agreement, examiners should follow the procedures for extending the time for acceptance outlined in this section or in 5.6.2.5 Translation of specifications as appropriate.

Request for Corrected Translation or Certificate of Verification

Note that the information in this part only applies to translations filed after 25 September 2019.

In rare circumstances where the Commissioner reasonably believes that a translation does not accurately reflect the contents of a document (for example, PCT specification, basic specification, Article 19, and Article 34 amendments), the applicant may be requested to either file:

  • a corrected translation of the document and a certificate of verification for the corrected translation; or
  • a certificate of verification for the translation.

(See reg 3.5AC(9), reg 3.5AF(2D), and reg 22.15A).

The applicant has 2 months in which to respond to the request, otherwise the application will lapse.

Where a request is made by the Commissioner for a corrected translation and/or a certificate of verification, the period of time for acceptance may be extended by up to 2 months.

​​​​​​​Thus, where a request for a corrected translation and/or a certificate of verification is included in a (first or further) report, the final date for acceptance (FDA) is 14 months from the date of the first report (reg 13.4(1)(c)).

​​​​​​​Where examiners have any doubts about the accuracy of the translation, they should first consult Oppositions to determine an appropriate course of action.​​​​​​​

In the situation where no examination report is to issue, examiners should contact CEG with a request that a corrected translation and/or certificate of verification be obtained from the applicant. Examination should be placed on hold pending receipt of the corrected translation and/or certificate of verification. After receipt of the document(s), examiners should follow the procedures outlined above in Extending the Time for Acceptance.

In the situation where an examination report is to issue, examiners should contact CEG with a request that a corrected translation and/or certificate of verification be obtained from the applicant.

Examiners should in the meantime issue the examination report. The report should include a note informing the applicant that formal notification regarding a request to provide a corrected translation and/or certificate of verification will issue (this will be sent by CEG). The time for acceptance should also be extended as indicated above.

Request for Basic Specification

The Commissioner will only request an applicant to file a basic specification and/or its translation* in certain circumstances (see 5.6.2.9 Convention Applications). A request by the Commissioner for a copy of the basic specification and/or its translation may in some circumstances extend the period of time for acceptance by up to 5 months.

​​​​​​​In general, an applicant has 3 months from the date of the request in which to provide the documents (reg 3.14D(2)). However, where the period ending 5 months from the date of a report that first requests the applicant to provide a basic specification and/or its (verified) translation extends beyond the final date for acceptance (FDA) that otherwise applies, the FDA will be the later date, that is, 5 months from the date of the report which first mentions the objection (reg 13.4(1)(k)).

​​​​​​​Note that for translations that were filed before or on 25 September 2019, a certificate of verification for the translation must also be provided.

Entitlement Disputes During Examination

Where there is an entitlement dispute in progress during the examination of an application, examination can continue, however, the application must not be accepted.

Section 36 allows a person to challenge the entitlement of the applicant. Section 32 allows a co-applicant to challenge the entitlement of another co-applicant. Until the Commissioner has made a determination in an entitlement dispute, the entitlement of the nominated person of record is uncertain. It follows that the Commissioner cannot be satisfied that the requirements of s15 have been met, and an objection under reg 3.18(2)(a)(i) applies (regardless of whether any statement relating to entitlement has been made).

Note that if examiners become aware, during examination, that there is an unresolved application under s32 or s36, they are to raise an objection (see PERP code [B9]). The objection is to be maintained in any subsequent reports, and acceptance is not to take place until the entitlement dispute has been resolved or withdrawn.​​​​​​​

The final date for acceptance (FDA) is reset to 3 months after the Commissioner has made a decision under s32 or s36, if that date is later than the FDA that otherwise applies (reg 13.4(1)(e) or 13.4(1)(f)). 

See also:

  • 7.2.7 Sections 17 and 32 – Disputes Between Applicants and Co-Owners; and
  • 7.2.8 Entitlement – Sections 33, 34, 35, 36, and 191A.

Action by a Court or Tribunal

Where there is a court or tribunal action relating to the patent request or specification, then the period of time for acceptance may be extended where necessary. The final date for acceptance (FDA) may be extended to a date 3 months from the day when the action is withdrawn, or finally dealt with, or a further period determined by the court or tribunal (reg 13.4(1)(h) and reg 13.4(1)(j)).​​​​​​​