5.6.2.3 Extension of Time Requested (s223 actions)

Also in this Chapter:

• 5.6.2.1 Request for Examination
• 5.6.2.2 Application in a state of lapse
• 5.6.2.4 Payment of fees
• 5.6.2.5 Translation of specifications (requirements for certification, poor translations)
• 5.6.2.6 Obtaining priority documents
• 5.6.2.7 Report Dispatch, Correction of Report etc.
• 5.6.2.8 Further Report Considerations
• 5.6.2.9 Convention applications

Key Legislation:

Patents Act:

• s6(c) Deposit requirements
• s104 Amendments by applicants and patentees  
• s223 Extensions of time ​​​​​​​

Related Chapters:​​​​​​​​​​​​​​​​​​​​​

• 5.7.6.1 Insertion or alteration of s.6(c) information - deposit requirements.

Restoration of an Application under s223

An application that has lapsed may be restored if the relevant time is extended under s223. Under the provisions of s223, an extension of time:

• must be allowed by the Commissioner where, because of an error or omission by Office staff, a relevant act has not been done within a prescribed time; or
• may be allowed by the Commissioner where, either because of an error or omission by, or on behalf of the person concerned, or due to circumstances beyond the control of the person concerned, a relevant act has not been done within a prescribed time.

The presence of an “Application for an Extension of Time” on file indicates that a s223 request may be pending. Examiners should forward any case on which action under s223 may be required, or upon which there is an unactioned application under s223 to the supervising examiner. The supervising examiner will then refer the matter to Patent Oppositions.

Examination should not continue until the s223 request has been finalised. In particular, an application must not be accepted where an extension of time has been requested, but not yet granted.

The only exception to the above is the consideration of s104 amendments to insert micro-organism deposit details. In this case, the allowability of the amendment is not dependent on the s223 request being granted and therefore, the amendment should be allowed forthwith (see also 5.7.6.1 Insertion or alteration of s6(c) information).

Note that although the case may contain an indication that the Commissioner or delegate is satisfied that the extension of time is justified, the extension of time (if for a period of more than 3 months) cannot be allowed until the request has been advertised in the Official Journal and the opposition period has elapsed (s223(4)).