Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure.

7.11 Extensions of Time and Restoration of the Right of Priority

Date Published

Relevant Legislation

The Act

Section 223Extensions of time

The Regulations

Reg 5.9Extension of time for filing evidence
Reg 5.10 as in force immediately before 15 April 2013Conduct of proceedings to which this Act applies
Reg 5.22Commissioner may give directions
Reg 22.24Practice and procedure other than for opposition proceedings



The Patents Act and Regulations contain provisions allowing the Commissioner to extend the time for performing specific actions in certain circumstances.  Where the time for performing an action is extendible under the legislation, the nature of the action will determine which provision applies.  

Section 223, reg 5.9, and reg 5.10(2) as in force immediately before 15 April 2013, are exclusively extension of time provisions.  Extensions under these provisions are discussed more fully in the following sections.  See 7.11.1 Extensions of Time - Section 223, 7.11.2 Extensions of Time - Reg 5.9, and 7.11.3 Extensions of Time - Reg 5.10.

The more broadly applicable direction provisions of reg 5.12 and reg 5.22 may be used to extend time periods during procedural oppositions commenced on or after 15 April 2013 (see 7.3.1 Directions in Opposition Proceedings). Similarly, reg 22.24 may be used to extend time periods where the Patents legislation authorises the Commissioner to hear and decide a matter that is not an opposition (e.g. in proceedings under sections 33, 34, 35, 36 see 7.2.8 Entitlement).

In its role as a Receiving Office or International Searching Authority (ISA), IP Australia considers applications under the PCT Rules to restore the right of priority where an international application is filed after the end of the normal 12-month priority period.  See 7.11.4 Restoration of the Right of Priority under the PCT.

The relationship between regulation 5.9 and section 223

Section 223 is universally applicable, except in respect of prescribed actions (see section 223(11) and reg 22.11).  The prescribed actions that are excluded from the operation of section 223 are:

  • any action in Chapter 5 of the Regulations, except the filing of a notice of opposition (under reg 5.4 or reg 5.10) or the filing of a Statement of Grounds and Particulars (under reg 5.5 or reg 5.11);
  • filing an application for an extension of term of a pharmaceutical patent AFTER the normal term of the patent has expired; and
  • any action in Chapter 20 of the Regulations.

Regulation 5.9 allows the Commissioner to extend the time for an “evidentiary period” specified in reg 5.8.  Regulation 5.9 does not permit the extension of any other time period specified in Chapter 5.  

Consequently, there are no time periods where both section 223 and reg 5.9 can apply.  Also, there are some time periods that cannot be extended by either provision.  As the tests applying to section 223 and reg 5.9 are different, it is essential to determine which extension provision is applicable to the situation.

Amended Reasons

Amended Reason Date Amended
Back to top