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5.6.9.8 Lapsing of an application

Date Published

Key Legislation:

Patents Act:

  • s107 Amendments directed by Commissioner: applications for standard patents  
  • s142 Lapsing of applications 
  • s148 Lapsing etc. of applications
  • s150 Restoration of lapsed application 
  • s223 Extensions of time  

Patents Regulations:

  • 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

Lapsing Under Section 142

An application will lapse under s142 as follows:

  • A provisional application will lapse at the end of the prescribed period. Usually this is 12 months after its filing date, or if the prescribed period is extended, at the end of the extended period;
  • A complete application for a standard patent will lapse where any one of the following apply:
    • the applicant has not requested examination within 5 years of filing of the complete application;
    • the Commissioner has directed the applicant to request examination, and the applicant has not requested examination within the prescribed period;
    • the applicant has failed to pay a continuation fee within the prescribed period. The prescribed period is the period ending at the last moment of the anniversary of a date which would be the date of the patent if a patent were granted on the application. For a divisional application, the date of the patent granted on such an application is the date of the patent of the parent application;
    • the patent request and complete specification are not accepted within the prescribed time. The prescribed time for acceptance is outlined in 5.6.9 Acceptance and Grant; or
    • if the application is a PCT application, under prescribed circumstances; and/or
  • Where, under s107, the Commissioner has directed the applicant to amend a standard application and the applicant has not complied with the direction within the time specified by the Commissioner, then the application will lapse.

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 meaning of 'relevant act' is given in s223(11). Note that this is extremely broad, although it excludes certain actions prescribed in reg 22.11(4).

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 Oppositions.

Further information is provided in 7.11 Extensions of Time and Restoration of the Right of Priority.

Lapsing for Non-payment of Continuation Fee

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 5.6.2.2 Applications in a State of Lapse?).

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 s223 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 5.5.3.4 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.

Lapsing Under Section 148

In certain circumstances, an application which involves 'associated technology' (for example, nuclear weapons) will lapse (s148). It is also possible for such applications to be restored where the conditions giving rise to the lapsing no longer apply (s150). Examination is not to commence, or continue, on an application which lapses under s148. If such an application is restored, then examination can proceed.

Lapsing Under Regulations 3.2A(5) and 3.2B(3)

If a complete specification is not suitable for reproduction when it is filed, the Commissioner can treat the specification as having been filed and issue a direction under reg 3.2A or reg 3.2B. Where such a direction is not complied with by the times set out in reg 3.2A(5) or reg 3.2B(3), the application will lapse (see 5.3.2.4 Substitute pages to comply with formalities​​​​​​​).

Lapsing under Regulation 22.2B

If a provisional specification is filed with a request for a patent, or a complete specification is filed with a request for an innovation patent or a standard patent, but the appropriate fees are not paid when payable, the Commissioner may within one month invite payment of the fee. The fee must then be paid within 2 months of the date of the invitation. If the fee is not paid within this period, the application will lapse (or the will patent cease, as appropriate) at the end of the 2-month period.

Note that under Regulation 22.2F, if the Commissioner does not give the invitation within 1 month, the application will not lapse.

Dealing with Lapsed, Withdrawn, Refused, Revoked, Ceased, and Expired Cases

The power of the Commissioner to deal with an application/patent that has lapsed, ceased or expired, or been withdrawn, refused, or revoked depends on whether there is still an application or patent in existence. The following provides general guidance on how to approach such matters.

Note that where it is uncertain whether the Commissioner has the power to carry out an action on an application/patent which is lapsed/withdrawn/refused/revoked/ceased/expired, the matter should be discussed with Oppositions.

Lapsed/Withdrawn

Where an application has lapsed or is withdrawn, it is no longer subsisting (see Esso Research & Engineering Co v Commissioner of Patents (1960) HCA 31). The Commissioner has no power to take action on an application that does not subsist (unless the Act clearly indicates a contrary intention). Consequently, the Commissioner cannot amend an application that has lapsed.

However, a lapsed application can be restored under s223, as this is clearly the intention of this section. Consequently, an applicant who wishes to amend (or otherwise deal with) a lapsed application must first restore the application before any other action can be considered.

Actions under s36 can also proceed in relation to lapsed or withdrawn applications, since this is explicitly permitted by s36(2).

Refused/Revoked

Similar considerations apply where an application/patent is refused or revoked. An application/patent that has been refused or revoked is properly regarded as not subsisting and consequently the Commissioner cannot perform any actions on the application/patent (see Kyowa’s Application [1969] FSR 183).

However, where there is an appeal against a decision to refuse or revoke, the refusal or revocation is effectively put on hold until the appeal is decided. Consequently, the application/patent continues to subsist until the appeal is resolved.

Ceased/Expired

Where a patent has ceased or expired, it is no longer in force. It is not the case that the patent does not subsist as the patentee has the right to bring an action for infringements that occurred while the patent was in force. As the patent continues to subsist, the Commissioner can carry out actions such as amending the patent or recording an assignment of the patent.

Amended Reasons

Amended Reason Date Amended

Published for testing
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