7.11.1 Extensions of Time - Section 223

Also in this Chapter:

• 7.11.2 Extensions of Time - Reg 5.9
• 7.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)
• 7.11.4 Restoration of the Right of Priority Under the PCT

Sub-chapters:

• 7.11.1.1 Relevant Act
• 7.11.1.2 Subsection 223(1) - Office Error
• 7.11.1.3 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
• 7.11.1.4 Subsection 223(2A) - Despite Due Care​​​​​​​
• 7.11.1.5 Common Deficiencies in Requests under Section 223(2) or (2A)
• 7.11.1.6 Advertising an Extension - Subsection 223(4)
• 7.11.1.7 Extension of Time for an Extension of Term
• 7.11.1.8 Grace Period Extensions
• 7.11.1.9 Extension of Time to Gain Acceptance
• 7.11.1.10 Examination Report Delayed or Not Received
• 7.11.1.11 Co-pending Section 104 Application - Budapest Treaty Details
• 7.11.1.12 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
• 7.11.1.13 Person Concerned: Change of Ownership
• 7.11.1.14 Date of a Patent Where an Extension of Time is Granted to Claim Priority​​​​​​​

Key Legislation:

Patents Act:

• s223 Extensions of time

Patents Regulations:

• reg 22.11 Extension of time
• reg 22.21 Protection or compensation of certain persons
• Schedule 7 Fees
• Chapter 22 Part 1 Miscellaneous - Fees and Costs

In this topic:

• Relevant Legislation
  • The Act
  • The Regulations
• Introduction
• Protection or Compensation Provisions​​​​​​​

Relevant Legislation

The Act

The Regulations

Introduction

Each of the Patents, Trade Marks, and Designs Acts contain specific provisions for extensions of time.  While there are some similarities in the general principles of law applicable to granting extensions of time, the specific provisions of the individual Acts differ.  

The legal precedent for section 223 arises from extensions considered under this section of the Patents Act 1990; the corresponding provisions of section 160 of the Patents Act 1952; and, in some circumstances, under the equivalent provisions of the Trade Marks Act.

Section 223 is universally applicable, except in respect of prescribed actions (see section 223(11) and regulation 22.11).  

Regulation 22.11(1A) and (1B) deal explicitly with the situation where a request is made to do a future act, and that request is opposed.  The period of the extension must be extended by the Commissioner to cover the time lost because of the opposition.

Protection or Compensation Provisions

The provisions in section 223(9) and (10) and regulation 22.21 provide for the protection or compensation of parties who exploited an invention in a patent application that had lapsed or a patent that had ceased, but was restored as the result of an extension of time being given.