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5.6.9.2 Postponement of Acceptance

Date Published

An applicant may request postponement of acceptance until any date up to the date prescribed for the purposes of s142(2)(e) (usually the final date for acceptance). It is open to the applicant to cancel the postponement at any time.

Although s49A gives the Commissioner the discretion to postpone acceptance even if the applicant has not requested it, this provision will rarely be used. In the event that the Commissioner decides to postpone acceptance, such cases will be handled by Oppositions.

Processing of Request

Any request for postponement of acceptance will normally be processed by CEG. If the request has met the necessary requirements, CEG will send a letter to the applicant advising that the request has been allowed and that acceptance of the application has been postponed. CEG will also record this information in the case file, which will indicate that there is a postponement of acceptance in place. If examiners become aware of a postponement request which has not been processed, they should immediately notify CEG. While supervising examiners have the delegation to grant postponement requests, CEG have primary responsibility for handling these. Thus, supervising examiners should not have to exercise their delegation in this regard other than in exceptional circumstances. Where this occurs, CEG should be notified as soon as possible for administrative purposes.

Examination Practice

The examination of an application for which a postponement of acceptance is in place is to proceed as per usual, except that if the application is otherwise in order for acceptance, it is not to be accepted.

When examining a case on which postponement has been requested, examiners must check the latest correspondence on file to determine whether the postponement is currently in force.  Below are the three main scenarios that may occur.

Other Objections in Addition to Postponement

If a postponement is still current but there are other objections, the following note should be included in the report:

"NOTE: There is a current postponement of acceptance in place. If you overcome all other objections before the expiration of that postponement, the Commissioner will only accept the application at that time if you have filed a clear and unambiguous statement requesting the withdrawal of that postponement. Otherwise, a further adverse report will be issued."

This text will be automatically included in the report when the appropriate option is selected in the 'Postponement of Acceptance' question during report generation.​​​​​​​

Postponement Only Objection

Where a postponement remains in effect and this is the only outstanding objection, an adverse report is to be sent to the applicant stating:

"While the application is otherwise in order for acceptance, it cannot be accepted because there is a current postponement of acceptance in place.

You must respond to this report in order to gain acceptance. The Commissioner will only proceed to accept the application if you file a clear and unambiguous statement requesting the postponement be withdrawn with sufficient time for the request to be processed. If the application is not accepted by <final date for acceptance> your application will lapse."

This text, and the final date for acceptance, will be automatically included in the report when the appropriate option is selected in the 'Postponement of Acceptance' question during report generation.​​​​​​​

Note that even though a report has issued stating that the application is in order for acceptance, but that acceptance has been postponed, it is still open for applicants to propose amendments under s104 in their response. Such amendments are to be treated in the usual manner.

If a case is accidentally accepted whilst there is a current postponement of acceptance in place, examiners should follow the procedures outlined in 5.6.9.4 Acceptance ultra vires.

Withdrawal of Postponement

In order for acceptance to occur, the applicant must explicitly withdraw the request for postponement.

A statement in the correspondence such as "We formally withdraw any requests for postponement of acceptance", or words to that effect, will suffice. However, wording such as "I submit the application is now in order for acceptance, which action is earnestly solicited" are not to be inferred as withdrawing the postponement.

It is also possible for the applicant to withdraw the postponement via a check box option provided through Online services. Indicating the removal of the postponement via this check box is taken to be an explicit withdrawal of the postponement.

An indication of whether the postponement was removed using the check-box option is contained in the XML document associated with the response. Examiners will need to review the XML document to determine if removal of the postponement was performed through online services.​​​​​​​

If the case is ready for acceptance and the postponement has been formally withdrawn, examiners should remove the postponement of acceptance using the procedures outlined in the RIO for patents user guide.​​​​​​​

Where an applicant files correspondence withdrawing a postponement of acceptance, but does not address issues raised in a previous report, examiners should issue a further report stating:

"I have received your letter requesting withdrawal of the postponement of acceptance. However, the matters raised in the previous report remain outstanding."

Note that an explicit withdrawal of the postponement is required, even if the applicant (in their request for postponement) has specified a date on which the postponement is to expire.

    Amended Reasons

    Amended Reason Date Amended

    Published for testing
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