7.11.1.7 Extension of Time for an Extension of Term

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)
• 7.11.1.6 Advertising an Extension - Subsection 223(4)
• ​​​​​​​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:

• s70 Applications for extension of patent  
• s71 Form and timing of an application  
• s223 Extensions of time

Patents Regulations:

• reg 22.11 Extension of time

Note: Section 223 is not available to extend the time for filing a request for an extension of term of a patent to a date after the end of the 20 year patent term.

For an extension of the term of a patent to be considered, pursuant to section 71(2) the application must be filed:

1. within the original term of the patent; and
2. within 6 months of the latest of the following dates:
   1. the date the patent was granted;
   2. the date of the first inclusion in the Australian Register of Therapeutic Goods (ARTG) or
   3. the date section 71 commenced (27 January 1999).

Consistent with the policy behind the Patents Act, the provisions of section 223 are generally available to the various stages of an application for an extension of term of a patent.  However, there is a specific limitation provided by reg 22.11(4)(b), which provides that a relevant act for the purposes of section 223 does not include:

“filing, during the term of a standard patent as required by subsection 71(2) of the Act, an application under section 70(1) of the Act for an extension of term of the patent"

This is to prohibit an extension to the time for filing a request for an extension of term where the request is filed outside the term of the patent. An extension of time is intended to be available only for a request for an extension of term filed during the term of the patent.

Accordingly, in Aspen Pharma Pty Ltd and Ors v Commissioner of Patents and H Lundbeck (Joined Party) [2012] AATA 851, the Tribunal found that section 223 provides the Commissioner with the power to extend the time for making a request under section 70, providing the request is made within the term of the patent (confirmed on appeal in Alphapharm Pty Ltd v H Lundbeck A/S [2014] HCA 42).  This reasoning was followed by the tribunal in Merck Sharp and Dohme Corp and Commissioner of Patents [2013] AATA 71 at [12].

Where the application for an extension of term is filed before the end of the original 20 year term but after the relevant time limit of (2) above, an extension under section 223 can be sought to allow the application to be considered.