7.11.1.3.5 The Commissioner's Discretion

A number of guiding principles relevant to the exercise of the Commissioner’s discretion under section 223(2) arise from the decided cases referred to at 7.11.1.3.1 The Law. A summary is provided below.

Beneficial nature of section 223

Section 223 is beneficial in nature and should be applied beneficially (Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832). The extension of time provision is a general remedial section and has general application, and is applicable unless there is some clear indication to the contrary (Scaniainventor v Commissioner of Patents [1981] FCA 84 and Danby Pty Ltd v Commissioner and Rib Loc Group Ltd [1988] FCA 43. These cases were decided under the similar provisions of section 160 of the 1952 Act and are relevant to section 223 of the 1990 Act).

Burden of justifying an extension

While the applicant has the burden of placing before the Commissioner the circumstances which it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it should be so described (Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832).

General Considerations

An extension of time under section 223(2) may be granted at the Commissioner’s discretion. This is in contrast to subsections 223(1) and 223(2A) which are mandatory in their exercise. Therefore, even though the terms of section 223(2)(a) or (b) may be satisfied, the Commissioner is not obliged to grant an extension.

It must be remembered that the granting of an extension is the granting of an indulgence, and an indulgence should not be granted in some circumstances, for example where the extension serves no useful purpose, or where the Commissioner is functus officio. The fact that there are protection and compensation provisions may also influence the exercise of discretion in some cases.

These factors are discussed further below, together with the general considerations for exercising the Commissioner’s discretion to allow an extension of time under section 223(2).

No useful purpose

The discretion to allow an extension should not be exercised where the extension would serve no useful purpose.

Where it is manifestly clear that it would not be possible to accept an application under the terms of the Act, an extension of time to gain acceptance should not be granted. Similarly, an extension of time for depositing a micro-organism after the filing date of a specification would serve no useful purpose, given the requirements of section 6(d).

Section 223 cannot be used to extend the time period for acts that must, by necessity, precede grant of a standard patent or certification of an innovation patent, if the request is made after grant or certification. For such acts, allowing an extension of time requested after grant or certification would serve no useful purpose as the decision by the Commissioner to grant or certify cannot be withdrawn or revoked. However, if a decision to grant or certify a patent is ultra vires, for example because a request for an extension of time for filing a notice of opposition was properly filed before grant took place, then the section 223 request could be considered (principle derived from British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1556).

Other examples of extensions that would not be allowable since they serve no useful purpose are:

an extension of time to file amendments to a specification that do not comply with section 102(2) after acceptance or certification; and
an extension of time to oppose an application or request, where the extension is filed after grant has occurred.

Functus Officio

The discretion should not be exercised to allow an extension, where the extension relates to matters where the Commissioner has become functus officio. As a general rule, administrative decision-makers cannot re-make a final decision unless the relevant legislation permits them to do so. The decision-maker, having made a decision in the exercise of a statutory power, has nothing more to do with it, and is then said to be functus officio. In this regard, the Patents Act does not make provision (either express or implied) for the Commissioner to withdraw or revoke the valid grant of a patent or certification of an innovation patent.

Protection or Compensation Provisions

The provisions in section 223(9) and (10) and regulation 22.21 provide for the protection or compensation of parties who exploited an invention in a patent application that had lapsed or a patent that had ceased, but was restored as the result of an extension of time being given. It is a relevant consideration when exercising a discretion under section 223 that anyone making practical use of the invention is protected under these provisions. (Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832).

Protection is achieved by the Commissioner granting a licence after a request under reg 22.21. An application for a licence under regulation 22.21 was considered by a Deputy Commissioner in HRC Project Design Pty Ltd v Orford Pty Ltd (1997) 38 IPR 121. The refusal of a licence under analogous provisions of the Designs Act is reported in Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd [2007] ADO 3.

The person seeking a licence is required to serve a copy of their application on the patentee or patent applicant, and such other persons as the Commissioner reasonably directs (regulation 22.21(3)). The situations in which the Commissioner will direct that copy of the application for a licence be served on a third party are discussed in Law v Razer Industries 87 IPR 229.

Balance of factors

The balance of the relevant factors must favour the exercise of the discretion in favour of the applicant for an extension. The Commissioner, in balancing these factors, is entitled to proceed on the basis that it is more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time (Sanyo v Commissioner of Patents [1996] AATA 832).

Relevant factors include whether an applicant for an extension has given a full and frank disclosure of the circumstances surrounding the error or omission or circumstances beyond control. For section 223(2)(a) – error or omission - this would include all the surrounding circumstances that led to the error or omission, including a disclosure of the chain of causation. In Kimberly-Clark Ltd v. Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569, in the context of an application to extend time for the lodging of an objection to the grant of a patent, Jenkinson J found that, in order to make out a proper case justifying an extension:

"an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."

Considerations for exercising the discretion

In considering an application under section 223(2), there are a number of important factors to be considered, which were summarised in Vangedal-Nielsen v Smith (Commissioner of Patents) [1980] FCA 163; (1980) 33 ALR 144 at 150 as follows:

i. whether the Commissioner is satisfied that a proper case has been made out justifying an extension;

ii. where appropriate, whether a serious opposition has been foreshadowed;

iii.whether there has been undue delay in seeking an extension of time;

iv. the interests of the parties in refusing or granting an extension;

v. the public interest.

In balancing these factors, it is “more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time” (Re Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832 at [16]).

Proper case

The factors to be taken into account in considering whether a proper case has been made out are summarised elsewhere – see 7.11.1.3.2 Subsection 223(2)(a) and 7.11.1.3.3 Section 223(2)(b) - Circumstances Beyond Control and 7.11.1.3.4 Filing a Request under Subsection 223(2).

Serious opposition

Where an opponent seeks an extension of time for a relevant act related to opposition proceedings, it needs to be clear that a serious opposition is in train. There should be no doubt that the opponent has serious, or potentially serious, opposition grounds. However, simply because an opposition is serious does not of itself justify an extension of time.

Delay

Inordinate delay in filing an application for an extension of time, or in filing available relevant material in support of the application, is potentially detrimental to the public interest. Consequently it is expected that where such a delay has occurred an explanation in declaratory form will be provided. In any event, the Commissioner will need to be satisfied that any further or unnecessary delay which has hampered having the matter dealt with at the earliest possible date was not caused to any significant extent by the actions of the applicant for the extension of time (Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832).

It should be remembered that because of the provisions of reg 22.11(1), strictly the application is not made until such time as the declaration is filed.

The interests of the parties and the public interest

In considering the interests of the parties, any other party involved (e.g. a patent applicant where the applicant for the extension is a prospective opponent) will be invited to comment on the extension request and to be heard as a matter of choice, pursuant to the requirements of reg 22.22. This is separate to the potential for opposition if an extension request is advertised under section 223(4).

The public interest lies in the efficient and orderly processing of matters before the Patent Office, and can best be related to the question of delay. Inordinate delay in performing a relevant act, for example filing documents in an opposition or in paying continuation/renewal fees creates uncertainty and is potentially detrimental to the public interest.

The Period of the Extension

Where granted, the length of the extension period 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.

Where an error or omission or circumstances beyond control is involved, the applicant for the extension 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 or circumstances beyond control not occurred. If this period is inadequate to meet the purpose of an extension under section 223(2), the applicant has not, on the face of the application, justified the extension.

Where an applicant files a request under section 223, they will need to ensure any subsequent actions with a due date falling before the section 223 request is determined are done at the relevant time. Failure to perform those actions at the relevant times would potentially be a new “error or omission” not covered by the section 223 request under consideration. (G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 and International Business Machines Corporation v Total Peripherals [2000] APO 44). See also 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Application in relation to subsequent continuation or renewal fees.

The extension period where an opposition is filed

Where an extension of time under section 223(2) is opposed, reg 22.11(1A) and (1B) apply to extend the time to include the period from the day on which the notice of opposition is filed to the end of:

a. if an application is made to the AAT for a review of a decision of the Commissioner – the day when the application is withdrawn or finally dealt with or determined; or

b. in any other case – 21 days after the end of the day on which the Commissioner decides the application.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023