7.11.1.6 Advertising an Extension - Subsection 223(4)

Also in this Chapter:

• 7.11.1.1 Relevant Act
• 7.11.1.2 Subsection 223(1) - Office Error
• 7.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
• 7.11.1.4 Subsection 223(2A) - Despite Due Care​​​​​​​
• 7.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A)
• ​​​​​​​7.11.1.7 Extension of Time for an Extension of Term
• 7.11.1.8 Grace Period Extensions
• 7.11.1.9 Extension of Time to Gain Acceptance
• 7.11.1.10 Examination Report Delayed or Not Received
• 7.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
• 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
• 7.11.1.13 Person Concerned: Change of Ownership
• 7.11.1.14 Date of a Patent Where an Extension of Time is Granted to Claim Priority

Key Legislation:

Patents Act:

• s223 Extensions of time

Patents Regulations:

• reg 22.11 Extension of time

Related Chapters:

• 7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A)

Advertisement and opposition

Under section 223(4), it is mandatory to advertise an application made under section 223(2) or (2A) for an extension of time for more than 3 months, unless the Commissioner is satisfied that the application would not be granted even in the absence of opposition (section 223(6A)).  This provision saves third parties from going to the expense of filing an opposition to the grant of an application that the Commissioner does not intend to grant.

Where an application under section 223 is advertised, under section 223(6) a person may oppose the granting of an extension under section 223(2) or (2A).  For more information on opposing an amendment request under section 223 see 7.2.5 Section 223(6) - Opposition to an Extension of Time under Subsection 223(2) or 223(2A).

Therefore, generally speaking, before directing advertisement the Commissioner will need to be satisfied that grounds for the extension have been established so that, in the absence of any opposition being filed to the extension application, the extension could be granted.  As to the degree of satisfaction needed, this will require the existence of at least "some evidence on which the Commissioner could decide to grant the extension of time" even though there is other evidence on which the application could be refused (Kimberly-Clark Corporation v Proctor & Gamble Company [1992] APO 2).

When an extension of time is granted under section 223, pursuant to reg 22.11(2), a notice of the grant will be published in the Australian Official Journal of Patents.