Lapsing for Non-payment of Continuation Fee

Date Published

Regulation 13.3(1A) allows for a 6 month 'grace period' for paying a continuation fee. Accordingly, the actual lapsing of an application does not occur until the expiry of this 6 month period. If the continuation fee is still not paid after this 6 month period ends, the lapsing of the application is backdated to the date on which the prescribed time expired. The reference to the payment of a continuation fee is taken to include payment of that fee by a person other than the applicant, as well as the applicant.

During the 6 month grace period, the application is regarded as being in a "state of lapse" and only certain actions are possible during that period (see 2.13.2 Applications in a State of Lapse, or Lapsed).

Where an application lapses through non-payment of continuation fees after a first report is issued, the applicant, when seeking an extension of time under sec 223 to pay the continuation fees, will need to take into account the time left for acceptance upon 'restoration' of the application occurring and allow sufficient time in the extension request not only to address the reasons for lapsing, but also to gain acceptance. Note that the "stopped clock" ruling in Ferplas Industries Ltd's Application (1979) 14 AOJP 1185 does not apply to the Patents Act 1990 - see G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28.

Where an extension to the time for acceptance has been allowed, examiners must ensure that the final date for acceptance (FDA) is updated in PAMS (see Exam Details). A case note should also be added to the file, indicating that the FDA has changed as a result of the extension of time.

Warning: The FDA should only be changed when it is appropriate to do so.  Examiners should consult with a supervising examiner or senior examiner before changing the FDA in PAMS.