7.8.3.2 Hearings Near the Final Date for Acceptance

Also in this Chapter:

• 7.8.3.1 Overview of Proceedings

Key Legislation:

Patents Act:

• s223 Extensions of time  

Patents Regulations:

• reg 9A.4 Period for examination
• reg 13.4 Prescribed period: acceptance of request and specification
• reg 22.6 Exemption from fees

Applications where request for examination was filed on or after 15 April 2013

For standard patent applications where the request for examination was filed on or after 15 April 2013 and a hearing is requested within the period for gaining acceptance, the time for acceptance may be extended until 3 months from the date the decision is made (reg 13.4(1)(g)).  

This provision only applies if a decision issues (and the application is not refused in the decision).

Note that similar provisions apply to innovation patents – where the request for examination was filed on or after 15 April 2013 and a hearing is requested within the period for gaining certification, the time for certification may be extended until 3 months from the date the decision is made (reg 9A.4(f)).  

Applications where request for examination was filed before 15 April 2013

For standard patent applications where the request for examination was filed before 15 April 2013, the fact that a hearing has been requested does not change the final date for acceptance (FDA).  In this situation, the Commissioner is not favourably disposed to requests for a hearing received less than several months before the FDA.

Any request must allow sufficient time before the FDA for the hearing to take place and a decision to issue.  

Note that the applicant's rights in the application, and options to amend, are only preserved if a decision is issued before the application lapses. The closer the FDA, the less likely it is that a hearing officer can properly consider the matter.

Where a hearing is conducted or requested close to the FDA, there are a number of options available including:

• if the application is to be refused in toto, this decision could be given verbally or in the form of a letter to the applicant or attorney, with the explanation that written reasons will follow later.
• if there is patentable subject matter, but amendments are required, a verbal or written direction could be given, again with the explanation that written reasons will follow later. In this situation, if the applicant or attorney is satisfied with the outcome, it may not be necessary to issue a decision.
• the applicant could be entitled to an extension of time for acceptance, under s223(2).
• it may be clear from the file history that during the prosecution of the application there has been unwarranted delay in the Office.  (The application of reg 22.6(2) is clear evidence of such delay, but is not a prerequisite for the finding that delay has occurred in the Office).  If such a delay has occurred, s223(1) should be invoked.
• the applicant could file a divisional application.​​​​​​​

Where a hearing is requested and, despite the above options, there is insufficient time for a hearing officer to properly consider the matter before the FDA, Patent Oppositions will contact the applicant, explain the situation and draw attention to the possibility of filing a divisional application.