reg 3.2A Complete application for standard patent--direction to meet formalities requirements
reg 3.2B Specifications: formalities check for innovation patents
reg 13.3 Prescribed period: continuation fees
reg 22.2B Failure to pay: filing fees for patent requests

Related Chapters:

5.6.10.5 Issues specific to the Examination of divisional applications

Forms of Lapsing

Non-payment of Continuation Fees

An application will lapse if a continuation fee has not been paid (s142(2)(d) and reg 13.3). However, if the continuation fee is paid within 6 months of it being overdue, the application will be restored (reg 13.3(1A)). During this 6-month period the application may be regarded as being in a "state of lapse".

The continuation fee is confirmed to be paid if the 'In Force' date on the case summary is beyond the current date. Additionally, the case will be highlighted grey when they are in a “state of lapse”.

No examination should commence on cases in a ‘state of lapse’. However, if examination has already commenced and the application lapses before a report is sent out, examiners should advise the attorney or applicant the application is in a state of lapse (if CEG has not already done so). The Exam Request task should remain in the examiner’s work tray and not be reassigned to CEG.

With the exception of divisional applications under s79B (see 5.6.10.5 Issues specific to the Examination of divisional applications), the first fee is due 4 years after filing and subsequent fees are payable annually.

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. Therefore, upon restoration of an application from a state of lapse, the ‘Final date of Acceptance” does not get extended.

Expiry of 12-Month Period

An application will lapse if it has not been accepted within 12 months after the first report has been issued. This date is indicated on the first page of an Examination report as the ‘Final Date for Acceptance’.

If the ‘Final date for acceptance’ is approaching, examiners should aim to examine the case expeditiously, provided there is sufficient time to consider the issues. Where there is insufficient time to consider a response, the applicant/attorney should be called and advised of this.

Generally, a response filed on the last day would not provide sufficient time, especially if there are substantive issues. In this situation, examiners are not required to issue an adverse report, unless requested to do so by the attorney/applicant. If an adverse report is requested, the report should not be detailed and should only specify the objections that are maintained.

The 12-month period can be extended if there was an ‘error or omission’ by the Patent office.

Other forms of lapsing

An application can also lapse in a few other scenarios, but these are often dealt with outside of Examination:

a provisional application will lapse 12 months after its filing date unless extended;
applicant has not requested examination within 5 years of filing the complete application;
the Commissioner has directed an applicant to request examination, and the applicant has not requested within the prescribed period (2 months);
an applicant has not paid the relevant fees when filing a specification reg 22.2B;
the Commissioner has directed an applicant to amend and the applicant has not complied within the specified time;
the Commissioner has issued a direction under reg 3.2A or reg 3.2B, and the direction has not been complied within the specified time; or
an application involving ‘associated technology’ (for example, nuclear weapons) can lapse under s148.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.2.2 Application in a state of lapse?

Also in this Chapter:

Key Legislation: