3.11.1.8 Grace Period and Renewal/Continuation Fee Extensions

Grace Period Extensions

Regulation 22.11(3) permits extensions of time for errors or omissions that occurred in the "grace period" for payment of continuation or renewal fees, effectively allowing an extension of the grace period to pay the fee.  However, any such extension must be advertised for opposition purposes even if the extension sought is only for 1 day (refer to subsection 223(4)(b)).  Furthermore, the protection and compensation provisions of regulation 22.21 apply.

In applying for an extension of the grace period, the extension period required begins with the expiration of the grace period, and not at the anniversary date.  

The grace period fees still need to be paid when extending that period.  That is, the total fees due for an extension of the grace period are the continuation or renewal fee due at the relevant anniversary date, the full grace period fee and the fee for the extension of time request which is calculated from the end of the grace period.

Renewal/Continuation Fee Extensions

Care needs to be taken when considering extensions to pay renewal/continuation fee(s) where two or more such fees have not been paid, whether in the time permitted to do so or the grace period. In these circumstances the following should be determined/considered, and care taken to ensure that the s223 proforma reflects the correct information.

What are the acts for which the extension is sought?

For example, it is possible that there was an intention to pay one renewal/continuation fee by the due date, whilst the other fee was intended to be paid in the grace period. While the s223 proforma may indicate the acts concerned, usually based on the s223 request form, it is sometimes the case that the actual nature of the acts outlined in the declaratory or other evidence is different from those in the s223 request. Where there is a discrepancy between the acts in the s223 request and the evidence, this should be brought to the attention of the applicant/patentee, either in a further information letter or otherwise.

In some cases, an extension may have been requested for a single continuation/renewal fee where the time to pay other renewal/continuation fee(s) has expired. Again, clarification should be sought from the applicant/patentee regarding whether the extension is intended to cover the other unpaid renewal/continuation fee(s) as well. This should be done even if the grace period to pay one of the outstanding renewal/continuation fees has not yet expired.

If there are other reasons to doubt the acts for which the extension is sought, these should be raised with the applicant/patentee and clarification sought.

What is the impact on fees?

Any impact on fees should also be determined and brought to the applicant/patentee’s attention as well as there may be a shortfall in fees paid.

See also 3.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Application.