(1) The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a) the Commissioner or a Deputy Commissioner; or

(b) an employee; or

(d) the receiving Office; or

(e) the International Bureau of the World Intellectual Property Organization

The power to grant an extension under this subsection is not discretionary once it has been established that an error or omission on the part of a person or office identified in section 223(1) caused a failure to do a relevant act within the required time.

For the meaning of “relevant act” see 7.11.1.1 Relevant Act.

Patent Office error

The duties of all employees at IP Australia employed under the Public Service Act 1999, include the duty to assist the Commissioner of Patents to perform his or her function. Therefore, an error or omission by any one or more employees of the Patent Office, provided that it caused a failure to do a relevant act in the required time, could form the basis for an extension of time under section 223(1).

Errors by the Receiving Office or International Bureau

Sections 223(1)(d) and (1)(e) allow for the grant of an extension pursuant to an error or omission by the Receiving Office (RO) or the International Bureau (IB) in relation to a PCT application. In this context, the extension would need to relate to some act required to be done in relation to the PCT application in the national phase before the Patent Office.

Where an extension is sought based on actions by the IB or an overseas RO, unless the error or omission is evident from the Australian casefile or Patentscope, the onus will rest with the applicant to provide evidence to establish the "error or omission" by the relevant authority.

Where there is an allegation that an RO or the IB has made an error, the applicant may be in dispute with the RO or IB over the existence of the error or omission. If so, the Commissioner will not be in a position to conclude that there has been an error or omission by the RO or IB in the absence of manifestly clear and unambiguous evidence.

Investigation of the error or omission

If the Patent Office identifies a need for an extension of time under section 223(1), or if an applicant/patentee does so and notifies the Commissioner, the circumstances surrounding any error or omission by a person at the Patent Office can, in many cases, be investigated by the Office itself.

The delegate considering the section 223 request should make enquiries with the appropriate areas to determine whether an error or omission was made by a person at the Patent Office, and whether it led to the relevant act not being done in time.

Where there is sufficient evidence on the case file or elsewhere at the Patent Office to support an extension of time, it is not necessary that the applicant/patentee file a declaration in respect of the error or omission. However, in some circumstances a declaration is required.

Where a declaration is necessary

It is sometimes necessary that a declaration is filed by the person requesting the extension setting out the grounds upon which the request is made. 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” (available ).

If, for example, a person misses a time limit as a result of receiving misinformation from the Office, it will normally be necessary to provide a declaration stating that the person relied on the incorrect information. It is also expected that the applicant has acted in good faith in relying upon our representations of the facts.

As a further example, it has happened that an attorney has acted on the basis of information obtained from the Patent Office electronic information system at a time when incorrect data had been entered on the system by an Office employee. At the time the application for extension was received, that data had been corrected, so there was no way the delegate of the Commissioner could verify the attorney's allegation. The problem was resolved by the attorney filing his own print out (including the incorrect data) annexed to an explanatory declaration.

Causative error

A finding that there has been an error or omission is not, in itself, enough to require the grant of an extension of time. There must be a causal link between the error or omission and a relevant act that is required by the legislation to be done within a certain time, but which is either not done or cannot be done within that time.

Errors by a person which are claimed to be due to incorrect advice from the Commissioner will generally fall under section 223(1) if the person:

sought advice from the Commissioner;
in seeking the advice, provided all relevant information, or provided sufficient information for the Commissioner to realise that further information was required before providing the advice;
the advice given was demonstrably wrong;
the applicant acted on that wrong advice; and
as a result, a relevant act was not done within the required time.

See R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441, and the decision on review Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144.

In this situation, it will normally be necessary to provide a declaration stating that the person relied on the incorrect information.

In Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals, Inc v Amgen, Inc [1997] APO 69, a potential opponent in a procedural opposition sought copies of relevant material from the Patent Office. That material was not provided until after the opposition period had expired and as a result, the opposition was filed late. The delegate, in allowing an extension under section 223(1), held that the failure of the Commissioner to timely respond to the request for information was an omission that prevented the opponent from making any responsible decision as to whether they should file an opposition, thereby preventing it from filing a notice of opposition.

Extensions of time under section 223(1) can be granted by the Deputy Commissioner (OEP)

Only the Deputy Commissioner in OEP can allow an extension of time on the basis of an error or omission by a person at the Patents Office, Receiving Office or International Bureau.

After investigation, a person at the Office may prepare a casenote (see Annex A) for review by the Deputy Commissioner who will allow the extension only if satisfied that there has been an error or omission by a person at the Patents Office, Receiving Office or International Bureau that caused a relevant act not to be done in time.

Grant of an extension under section 223(1)

Where the Deputy Commissioner (OEP) grants an extension of time under section 223(1) it is advertised as allowed under reg 22.11(2), and cannot be opposed (section 223(6)).

However, where there is a known third party whose interests may be adversely affected, the Deputy Commissioner will not proceed to grant an extension until he or she has ascertained whether that party objects to the grant. (This situation arises most commonly during opposition proceedings, where there is clearly an interested third party - see R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441, and the decision on review Jeijing Pty Ltd v Commissioner Of Patents & Ors. (1995) AIPC 91-144).

Period of Extension Granted

Where an extension is granted, the length of the extension is to be determined from the circumstances of the action which led to the necessity for an extension. Needless to say, this period may not necessarily coincide with the period actually applied for, and could be longer or shorter.

The general rule is that the applicant for an extension under section 223(1) is entitled to an extension period - nett of administrative delays and the like - which equates to the period which would have been available had the error or omission not occurred.

Where an extension of time proceeds to grant under section 223(1), the applicant or patentee will need to ensure any actions that fall due before the section 223 request is determined are done at the relevant time (eg. payment of continuation or renewal fees). Failure to perform those actions at the relevant times may not be covered by the section 223(1) extension under consideration by the Deputy Commissioner.

See G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28, and International Business Machines Corporation v Total Peripherals [2000] APO 44 discussed in 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Application in relation to subsequent continuation or renewal fees.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023