2.2.4.2 Delayed or Non-Receipt of the Report by the Applicant or Attorney

Date Published

Overview

The period for gaining acceptance runs from ‘the date of the first report’ (reg 13.4), i.e. the date that appears on the report.  The report is taken to have been given to the applicant on that date (reg 1.3(4)).  There is no provision in either the Act or Regulations to withdraw a report and replace it with another report, or for the date of a report to be changed after issue.

Consequently, a report issues when it is placed in the PAMS Ecase as a completed document, i.e. with the document status of ‘FILED’.  This occurs on pressing the ‘SEND’ button in PAMS.  Reports in PAMS will be uploaded into AusPat overnight and become visible on eDossier the following day.

Where there has been a delay in the receipt of the report by the applicant or attorney, it may be possible to extend the time for acceptance.  Any request for an extension of time should be referred to the supervising examiner, who will consult with Patent Oppositions.  In general, an extension of time is not allowed until it is needed, i.e. an extension is not needed until the normal period for gaining acceptance is about to expire.  An extension of time can also be allowed (without a formal request being made) where an application lapses due to expiry of the period for acceptance and there is clear evidence of Office error (see the scenarios discussed below).  In these circumstances, a case note should be added to the file and the supervising examiner informed of the situation.  If the supervising examiner agrees that sec 223(1) is applicable, the form at 3.11 Annex A - Section 223(1) Extension of Time for Acceptance File Note should be completed and the case referred to the Assistant General Manager (OEP). Further guidance on the treatment of extensions of time in accordance with sec 223 is provided in 3.11 Extensions of Time and Restoration of the Right of Priority.

Some specific scenarios in relation to issuing reports are discussed below.  See also 2.2.4.3 Correction of Reports for the situation where a completed report contains errors.


Report not Received

Examiners should be careful to ensure that all reports are addressed correctly. If for any reason a report does not arrive at its correct address, the report must stand (as there is no power to replace the report).

In the situation where a report has gone missing, COG will forward a copy of the report to the correct address, together with a covering letter explaining the circumstances and advising the applicant or attorney that, if needed, an extension of time under sec 223(2) to the period prescribed in reg 13.4 for acceptance of the request and specification will be allowed, commensurate with the delay.

If the report was correctly addressed, and prima facie it appears that the report was mailed by the Office, then the most likely explanation for it not being received is that it was lost in the mail. In these circumstances, the applicant or attorney is to be advised that an extension of time to gain acceptance may be sought under sec 223(2)(b) (circumstances beyond control), with a statutory declaration being required to establish that the report was not received at the correct address.


Report Sent to Wrong Address

If it is apparent that a report has been sent to the wrong address, then the report will stand, but the grounds to invoke the provisions of sec 223(1) will be regarded as established. In these circumstances the applicant or attorney is NOT to be asked to supply a statutory declaration to corroborate that the report was not received.  The applicant or attorney should be advised that an extension of time under sec 223(1) will be allowed if it is not possible to gain acceptance in time.


Report not Despatched

Where it is clear that a report was entered into PAMS, but not despatched, the report is regarded as issued on the date that it was dated.  A copy of the report should be despatched to the applicant or attorney (if they have not already obtained a copy from eDossier), together with a covering letter explaining the circumstances.  The grounds to invoke the provisions of sec 223(1) will be regarded as established.  The applicant or attorney should be advised that an extension of time under sec 223(1) will be allowed if it is not possible to gain acceptance in time.